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Question 1

The main issue for determination in this instant case is whether Wendy may successfully

advance a Patent infringement case against Ridesure and whether there are remedies that she

may get in case the case is successful. The law focuses on what would constitute an invention

and especially for purposes of patenting the invention and this is crucial for flexibility purposes

to allow different things be recognized as inventions capable of being patented if they meet the

requirements for a patentability. An invention that can be patented is one which is new, involves

an inventive step, capable of industrial application and the grant of the patent to such an

invention should not be excluded by the act. There is an exclusion list for things that would not

be considered as inventions including discovery, literary, dramatic, musical or artistic work and

among other things included in that section. Therefore in this case, Dobbinsafe and Ridesure

must meet all these conditions for an invention and especially the condition that such inventions

must be new to prevent state of the art inventions from being patented again.

An invention lacked novelty shall be determined by the two requirements of prior disclosure and

enablement. The court held that under the condition of prior disclosure, the prior art must

disclose the subject matter which if performed would result in patent infringement. The court

further held that under the condition of enablement, whatever had been disclosed must be

something that an ordinary skilled person could use to reproduce a practical result. Thus the

court essentially held that there would be patent infringement if a skilled person can reproduce a

prior disclosed art and the resulting act would fall within the patent’s claim.

In Takeda UK Ltd v F Hoffmann-La Roche AG [2019] EWHC 1911 (Pat), the claim was that a

temporary signal was not new as it had been disclosed to the public prior through a prototype

tested in public. The court held that for a claim of prior publication, it must contain clear
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directions regarding what the owner claims to have invented. Further, that there is no need for a

skilled person to examine the invention provided they are legally allowed to do so and if the

skilled person had seen the invention, then they would have understood what the invention was

and the underlying concept.

In this case, Ridesure claims that they have been manufacturing their boots which are similar to

Wendy’s in secret since 2012 but have only recently placed them on the market. Therefore the

main question would lie in whether Dobbinsafe is a new invention based on Ridesure’s claims

that their model existed in 2012 which was before Wendy patented her model in 2014. Thus in

line with the court, Wendy must establish that she sufficiently disclosed her invention to the

public before Ridesure and that the disclosure was clear in the steps taken to make the boots that

would enable a skilled person such as those in Ridesure to reproduce such a boot. As Wendy

had disclosed her invention in 2014 through the patent and had disclosed the specifications of the

boot in a manner that would allow a skilled person to reproduce the boots, her invention may be

considered as having met the novelty condition.

For Ridesure’s claim of prior existence of their boots, they must establish that they had disclosed

their invention to the public in 2012 as they claim that they were already manufacturing the boots

in that year. They must establish that their disclosure was clear and sufficient to enable a skilled

person such as Wendy to reproduce such boots. Thus as they had not disclosed their invention in

2012 as they claim and rather state that they were secretly manufacturing the boots before

releasing them to the marke, their boots might be considered as lacking novelty .

Therefore for the condition of novelty, given Wendy’s patent and disclosure in 2014 and the

Ridesure’s failure to disclose their invention in 2012 as they claim, Wendy’s invention might be

considered novel and thus Ridesure can be considered as infringing.

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The other condition for an invention concerns an inventive step of the patent, an invention shall

be considered as involving an inventive step if it is not obvious to a skilled person in the art with

the understanding of the matter that forms the art.

In the instant case, looking at Dobbinsafe and Ridesure, both exhibit similarities and mainly

because they serve the same purpose which is to provide a cooling system for horses while

galloping. However there are differences especially air and fluid intake and outlets in both boots

to ensuring that the cooling process functions. Nonetheless, these differences are not obvious

even to a skilled person in the art, such a skilled person will have to closely examine the boots,

dissemble them so as to see the differences in the cooling systems. Therefore, Wendy’s

Dobbinsafe exhibits the inventive step as its system which is much developed cannot be obvious

to a skilled person in the art. Thus while novelty would concern the question whether the

invention had been disclosed to the public and steps also disclosed in a manner that a skilled

person would reproduce the same results, inventive step would seek to ensure that such an

invention is not so obvious to a skilled person and especially where differences exist in the cited

matter and the invention. However, even when an invention is non-obvious, it does not guarantee

patent protection and especially if it is not novel as was seen in Merrill Lynch Inc's Patent

Application [1989] R.P.C. 561 where the court considered that even if the processing system

was new and different from the original art, it would still not be considered a patentable

invention as it was based on an old model.

Wendy’s patent specified that the Dobbinsafe was an air-cooled horse exercise boot and the

further specifications illustrate that it could be applied in the horse boot making industry.

Nonetheless, this condition of industrial application has been criticised and especially because

for instance there lacks a link between the technical and industrial aspects of some of the
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inventions. For example, a computer programme with no technical purpose cannot enjoy patent

protection as excluded by section 1 of the Act, yet the same has industrial application and can be

applied in many industries.

Therefore the exclusion list seems to disregard important inventions that might occur and

especially in technological areas which might not serve a technical purpose, but they may be

novel and capable of industrial application. The UK made amendments to its patent law and

recognized that new inventions might actually occur through biotechnology which initially had

been excluded as scientific and medical methods. Further by inserting section 4A which would

allow inventions consisting of a substance or composition for use in for instance methods of

human or animal treatment.

Thus, Wendy will have remedies such as a declaration that Ridesure’s product poses a threat to

her invention and an injunction against Ridesure’s continued selling of the product or she may

seek damages for losses sustained due to Ridesure which poses a competition to the original

product, her invention, Dobbinsafe.

Quesiton 2

The function and purpose of a trademark align with the need to guarantee and protect a

trademark that serves as an indication of the origin of goods. However, there is still a debate

concerning the usage of identical trademarks concerning identical goods, particularly on the

uncertainty regarding the scope of the function of trademarks. This paper highlights the issues

arising from the rule protecting trademarks from infringement through the usage of identical

marks and goods in the course of trade.

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The owner of the trademark shall have to prevent all third parties from using it in the course of

trade. However, the scope of the function of trademarks and especially regarding the use in the

course of trade has been a debate with others arguing that it extends to the brand identity,

protecting the owner’s specific interests and reputation of products and thus even an advertising

function of trademarks.

The trademark’s function has been addressed in a few cases by the CJEU. In Arsenal Football

Club plc v Reed [2002], Mr. Justice Laddie laid major emphasis on whether the usage of the

badges would act as an indication of their source.

The ECJ in response departed from Laddie's reasoning and instead concentrated on the function

of a trademark which is to ascertain the origin of the goods thus even if the badges were a sign of

loyalty and support, Reed's manner of usage was an indication of their origin which affected

Arsenal’s specific interests in controlling the type and quality of their products.

Essentially the ECJ's decision would exclude those who replicate sports kits on grounds that such

a usage of the original teams' marks was an indication of their origin and thus would affect the

team's specific interests. While such teams have a right to control the quality and number of their

kits, if one decides to replicate such kits and ensure that they are not passing it off as their own,

they should not be prohibited or taken to have infringed on the original trademark.

On the other hand, the ECJ expanded the function of trademarks and thus broadened the scope of

protection including modern trademark functions such as advertising and communication which

are associated with the brand’s reputation. The court held that the trademark allows to prevent of

comparative advertisement by third parties if this did not satisfy the requirements.
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However, this expansion could also be considered controversial and especially due to the lack of

clarity regarding marks with reputation. It is argued that the court was not clear as to what is to

be considered in determining that the mark has a reputation to be protected and how this would

be different from the normal marks that are also protected by the same provision from potential

infringement.

This paper submits that much clarity should be given regarding the function of trademark and

even where the CJEU has expanded the functions, the consumer’s interests should be paramount

in preventing monopoly. As the EU Commission had proposed back in 2013, the modern

functions of trademarks should not play a huge role in the independent construction of article 5

(1) (a) and thus there must be clarity regarding the functions of trademarks.