Cases Round-up

August 23, 2015

Data Retention: 35-year Retention Policy Upheld 

In a judicial review action, R (C) v Northumberland County Council & Anor [2015] EWHC (Admin) 2134, the Administrative Court (Simon J) has ruled that the data retention policy of Northumberland County Council is lawful.

The claimant (C) felt that he and his family had been the subject of a significant injustice in their dealings with Northumberland County Council, and that it held material about them as a result. C wanted all the data relating to the case to be destroyed. Northumberland County Council agreed to this, but the issue of principle still fell to be determined. The Information Commissioner was an interested party in the case.

The issue was whether it is lawful for Northumberland CC to have a policy of retaining child protection records for a period of 35 years after a case has been closed. In fact, the policy allows for a longer period of retention where the child is or becomes looked after (in which case the retention policy is 75 years from the date of birth) or adopted (in which case the retention period is 100 years from the date of the adoption order). C and the Information Commissioner contended that a proper retention period might be six years from the child’s 18th birthday, although it was accepted by all that it was for Northumberland County Council to justify its policy not for others to supply one.

Mr Justice Simon was clearly impressed by the evidence from Council staff as to the circumstances in which access to the data might be required long after the child reached his or her majority. Among the examples were access that might be relevant to siblings where parents had children many years apart and access by the data subjects themselves where requests may be of crucial importance to a sense of identity and emotional or mental well-being. The fact that the ICO had changed its stance on the policy, having at one time considered it lawful, may also have weighed with him.

In the judge’s view, there was a need to keep the records for a substantial period, and certainly substantially longer than the period argued for by C and the Information Commissioner. While ‘the period of 35 years is not the only possible period of retention, … in my judgment it falls within the bracket of legitimate periods of retention’. He therefore concluded that the policy ‘is in accordance with the law, has been carefully considered, adapted to the purposes for which it is required, and is applied proportionately and flexibly’.  

DRIPA Unlawful

A challenge brought by MPs David Davis and Tom Watson, represented by Liberty, has led the High Court to find that the Data Retention and Investigatory Powers Act 2014 (DRIPA), ss 1 and 2 are incompatible with the British public’s right to respect for private life and communications and to protection of personal data under Articles 7 and 8 of the EU Charter of Fundamental Rights.

In R (Davis) v Secretary of State for the Home Department [2015] EWHC 2029 (Admin), the High Court found ss 1 and 2 unlawful on the basis that:

they fail to provide clear and precise rules to ensure data is only accessed for the purpose of preventing and detecting serious offences, or for conducting criminal prosecutions relating to such offences;

access to data is not authorised by a court or independent body, whose decision could limit access to and use of the data to what is strictly necessary. The ruling observes that: ‘The need for that approval to be by a judge or official wholly independent of the force or body making the application should not, provided the person responsible is properly trained or experienced, be particularly cumbersome.’

The unlawful sections of DRIPA will remain in force until the end of March 2016 to allow time for the Government to legislate properly. At that point they will cease to have effect unless alternative provision is made.

Privacy, Publication of Images and Article 8

A Supreme Court judgment casts further light on the limits of privacy, especially in the context of the balance of the right to a private life and other social values. 

In Re JR38 [2015] UKSC 42 the Lords Justices dismissed the appeal by a young man which related to the publication of his image (taken from CCTV), at the request of the police, in the Derry Journal and the Derry News. He was barely 14 at the time. The publication was part of a police campaign, Operation Exposure, designed to counteract sectarian rioting. The appellant believed that the publication was a breach of his rights under the ECHR, Article 8.

When dismissing the application, the Divisional Court held that JR38’s Article 8 right was engaged because the published image was of a child, where it was at least possible he was involved in serious public disturbances. This risked stigmatising the child and impairing his rehabilitation and reputation. The interference with Article 8 was justified, however, because it was necessary for the administration of justice and not excessive in the circumstances. JR38 appealed to the Supreme Court.

The Supreme Court unanimously dismissed the appeal. Lord Kerr, with whom Lord Wilson agrees, held that Article 8 is engaged but the interference with the right is justified. Lord Toulson, with whom Lord Hodge agreed, held that Article 8 is not engaged, but if it were engaged the publication would be proportionate. Lord Clarke submitted a separate judgment concurring with Lord Toulson.  

Lord Kerr concluded (at [55]-[56]) that a nuanced approach is needed to reach a conclusion on this issue. The test is essentially a contextual one, involving not only whether the person asserting the right had a reasonable expectation of privacy but also many other possible factors such as the applicant’s age, consent, the risk of stigma and the use to which the published material is put. Reasonable expectation of privacy may be a factor of considerable weight but it is not determinative. On the facts, Article 8 is engaged because of JR38’s age and the effect which the publication of the photographs may have on him. The emphasis under Article 8 should be on the publication of the photographs rather than the activity in which JR38 was engaged (at [65]). However, the interference with Article 8 is justified. The police were entitled to disclose the image under the Data Protection Act 1998 as the publication was for the purposes of the prevention and detection of crime and the apprehension and prosecution of offenders. Publication furthered these objectives as well as seeking to divert young people from criminal activity. The police’s painstaking approach showed that this was a measure of last resort. The publication struck a fair balance between the interests of the community and JR38. He stood to benefit from being diverted from criminal activity, as did his community from the prevention of crime and apprehension of offenders (see [70]-[80]).

Lord Toulson concluded that Article 8 is not engaged. The ‘touchstone’ for engagement of Article 8 is whether the person seeking to assert their rights had a reasonable expectation of privacy and there was no reasonable expectation of privacy in these circumstances. Article 8 does not exist to protect rioting and the involvement of JR38 in the riot was not an aspect of his private life which he was entitled to keep private.  

NOW and Passing Off 

It seems that we are always hearing about the Internet breaking down traditional barriers, globalisation and the end of borders. So perhaps nobody should be surprised that the claimants in Starbucks (HK) Ltd v British Sky Broadcasting Group PLC [2015] UKSC 31 thought that the fact that they had long used the term NOW TV in Hong Kong meant that the use of that same branding term by Sky was passing off. But the courts here took a different view and, on 13 May, the Supreme Court has put the position clearly in a (relatively) simple judgment (a mere 68 paragraphs) on the topic.

The appeal raised the issue of whether someone seeking to maintain an action in passing off need only establish a reputation among a significant section of the public within the jurisdiction, or whether a claimant must also establish a business with customers within the jurisdiction. Although the trial court and the Court of Appeal were clearly against the claimants, the issue was not quite as straightforward as one might think. As Lord Neuberger noted, ‘there is conflicting jurisprudence in the common law world, and [the issue] is of particularly acute significance in the age of global electronic communication’. 


The claimants had provided a closed circuit IPTV service in Hong Kong since 2003. IPTV, or Internet protocol television, is a way of delivering TV or video content over the Internet. IPTV can be ‘closed circuit’ or ‘over the top’. Since 2006 the claimant’s service had been marketed and delivered under the name ‘NOW TV’. By 2012, NOW TV had become the largest pay TV operator in Hong Kong, with around 1.2 million subscribers, covering over half the households in Hong Kong. People in the UK cannot receive this closed circuit service, and no subscribers for its Hong Kong IPTV service have been recruited in the UK. However, a number of Chinese speakers permanently or temporarily resident in the UK in 2012 were aware of the NOW TV service through exposure to it when residing in or visiting Hong Kong, or from viewing NOW TV programmes on YouTube and other websites in the UK. The claimants had been considering expanding the NOW TV subscription service internationally since 2009 and, in June 2012, launched a NOW player ‘app’ in the UK on a website and via the Apple Store, targeted at the Chinese-speaking population in the UK. Meanwhile, in March 2012, the Sky announced that they intended to launch a new over the top IPTV service under the name ‘NOW TV’. The service was launched in beta form in mid-July 2012.

In April 2012, the claimants began proceedings seeking to prevent Sky from using the name NOW TV in connection with Sky’s IPTV service in the UK on the grounds that the use of the name amounted to ‘passing off’. At first instance, Arnold J found that a substantial number of Chinese speakers permanently or temporarily resident in the UK were acquainted with the Hong Kong service and that it had acquired a reputation amongst members of the Chinese-speaking community in the UK; this reputation was modest but more than de minimis. However, the judge he held that the key question was whether the viewers of programmes in the UK were ‘customers’ and that, for the purposes of passing off, it was not enough for the claimants to establish a reputation among a significant number of people in this country if they had no goodwill in this country. Arnold J dismissed the claim. An appeal to the Court of Appeal was also dismissed.


The Supreme Court unanimously dismissed the appeal.

Lord Neuberger, with whom the other justices agreed, stated that courts in the UK have consistently held that it is necessary for a claimant to have actual goodwill, in the sense of a customer base, in this jurisdiction before it can satisfy this requirement for the law of passing off [20-25]. Where a claimant’s business is abroad, people who are in the jurisdiction, but who are not customers of the claimant in the jurisdiction, will not do, even if they are customers of the claimant when they go abroad.

As Lord Neuberger put it:

As to what amounts to a sufficient business to amount to goodwill, it seems clear that mere reputation is not enough… The claimant must show that it has a significant goodwill, in the form of customers, in the jurisdiction, but it is not necessary that the claimant actually has an establishment or office in this country. In order to establish goodwill, the claimant must have customers within the jurisdiction, as opposed to people in the jurisdiction who happen to be customers elsewhere.

He went on to acknowledge that the law of passing off involves striking a balance between the public interest in free competition and the protection of the trader against unfair competition, stating (at [63]):

I am unpersuaded that [the] case is strengthened by the fact that we are now in the age of easy worldwide travel and global electronic communication. While I accept that there is force in the point that the internet can be said to render the notion of a single international goodwill more attractive, it does not answer the points made [earlier]. Further, given that it may now be so easy to penetrate into the minds of people almost anywhere in the world so as to be able to lay claim to some reputation within virtually every jurisdiction, it seems to me that the imbalance between protection and competition which [the claimants’] case already involves … would be exacerbated. The same point can be made in relation to increased travel: it renders it much more likely that consumers of a claimant’s product or service abroad will happen to be within this jurisdiction and thus to recognise a mark as the claimant’s. If [the claimants’] case were correct, it would mean that a claimant could shut off the use of a mark in this jurisdiction even though it had no customers or business here, and had not spent any time or money in developing a market here – and did not even intend to do so. 

Confusion Reigns: The CJEU’s Skype and Sky Judgment

The General Court has confirmed that there exists a likelihood of confusion between the figurative and word sign SKYPE and the word mark SKY in Cases T-423/12, T-183/13 and T-184/13 Skype Ultd v OHIM. It upheld the ruling of the the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) that the registered mark for Skype was likely to be confused with that of Sky. 

In 2004 and 2005 Skype applied to OHIM for registration of the figurative and word signs SKYPE as a Community trade mark for audiovisual goods, telephony and photography goods and computer services relating to software or to the creation or hosting of websites. In 2005 and 2006, British Sky Broadcasting Group, now Sky plc and Sky IP International, filed a notice of opposition, pleading the likelihood of confusion with its earlier Community word mark SKY, filed in 2003 for identical goods and services.  

OHIM upheld the opposition, considering, in essence, that there existed a likelihood of confusion of the signs at issue on account, in particular, of their average degree of visual, phonetic and conceptual similarity and that the conditions for establishing a reduction of that likelihood had not been satisfied. Skype sought annulment of those decisions before the General Court.

As regards the visual, phonetic and conceptual similarity of the signs at issue, the Court has confirmed that the pronunciation of the vowel ‘y’ is no shorter in the word ‘skype’ than it is in the word ‘sky’. In addition, the word ‘sky’, part of the basic vocabulary of the English language, remains clearly identifiable in the word ‘skype’, in spite of the fact that the latter is written as only one word. The Court also considered that the element ‘sky’ in the word ‘skype’ can perfectly well be identified by the relevant public, even if the remaining element ‘pe’ has no specific meaning.

Moreover, the fact that, in the figurative sign applied for, the word element ‘skype’ is surrounded by a jagged border in the shape of a cloud or a bubble does not affect the average degree of visual, phonetic and conceptual similarity. Visually, the figurative element does no more than highlight the word element and is, therefore, perceived as a mere border. Phonetically, the figurative element in the shape of a border cannot produce any phonetic impression, this latter remaining determined solely by the word element. Conceptually, the figurative element conveys no concept, except perhaps that of a cloud, which would further increase the likelihood of the element ‘sky’ being recognised within the word element ‘skype’, for clouds are to be found ‘in the sky’ and thus may readily be associated with the word ‘sky’.

So far as concerns the argument that the ‘skype’ signs are highly distinctive because they are known by the public, the Court declared that, even if the term ‘skype’ had acquired a meaning of its own for identifying the telecommunications services provided by Skype, it would be a generic, and consequently descriptive, term for services of that kind.

Lastly, the Court confirmed that account cannot be taken of the peaceful coexistence of the signs at issue as a factor that could reduce the likelihood of confusion, the conditions in that connection not being satisfied. The peaceful coexistence of those signs in the UK concerns only one isolated, highly specific service (namely, peer-to-peer communications services) and cannot, therefore, lessen the likelihood of confusion in respect of the many other goods and services covered by the signs. In addition, that coexistence had not lasted long enough at the time of the dispute to give grounds for the assumption that it was based on the absence of any likelihood of confusion in the mind of the relevant public.

Standard-essential Patents and Competition

The Court of Justice of the European Union has given guidance in a case concerning patents in the telecoms sector that might have some implications in technology patent negotiations generally. The case in question, Case C-170/13 Huawei Technologies Co Ltd v ZTE Corp, ZTE Deutschland GmbH, was a reference from the Landgericht Düsseldorf and concerned a possible clash between the law as understood in Germany and the published position of the European Commission (Statement of Objections sent to Samsung ) on the balance between the extent of the obligation on patent holders to grant licences under FRAND terms (fair, reasonable and non-discriminatory terms) and the restriction on abuse by such patent holders of a dominant position.

The headline finding of the CJEU is that the bringing of an action for a prohibitory injunction against an alleged infringer by the proprietor of a standard-essential patent which holds a dominant position may constitute an abuse of that dominant position in certain circumstances. In particular, where the proprietor of the patent has undertaken in advance to grant third parties a licence on FRAND terms, that proprietor must, before it brings such an action for an injunction prohibiting the infringement of its patent or for the recall of products for the manufacture of which that patent has been used, present to the alleged infringer a specific offer to conclude a licence.