European IP Bulletin, Issue 16, October 2004
October 2004
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Hot Topics (click the header at left to view all of the Hot Topics case notes)
1. European Commission's Proposal to Amend Designs
In order to increase competition, the European Commission has proposed to amend Directive 98/71 on the legal protection of designs by introducing a “repairs clause” and removing the Member States’ option to maintain design protection for “visible” replacement parts.
2. Launch of IP Europe Website
A new website called IP Europe was launched to help inventors and Small and Medium Enterprises capitalise on their patents, trade marks and designs in Europe. It provides various tools intended to help them exploit their new ideas by increasing awareness and comprehension of the industrial property system.
Copyright (click the header at left to view all of the Copyright case notes)
3. Nominet Celebrates Database Copyright Case Victory
Nominet, the registry for .uk internet domain names, has won its court battle in Australia regarding copyright infringement and breaches of Australian fair trade laws.
4. German Draft Copright Law to Introduce Levy on Reprographic Equipment
The German Draft Copyright Law, if passed, will ensure that right holders are compensated for the use of their works through a levy on the blank media and storage equipment used to make copies.
Patents (click the header at left to view all of the Patents case notes)
5. Patent Litigation Makes Its Way Into Internet and Related Technologies
Commercialisation of internet and related technologies has resulted in the recent emergence of a plethora of litigation between patent holders and the users of such technologies. The patent holders’ readiness and willingness to assert their patent rights, by playing ‘David’ to reign over ‘Goliaths’ of internet companies such as Amazon, Netflix and Overstuck.com, provides new insight into the internet-related technology paradigm, its commercialisation and the role of intellectual property rights.
6. Does Science Reduce the Risk of Inconsistent Findings?
The Court of Appeal has refused to stay proceedings brought by DSM for a declaration that its use of bacterial material remains within the terms of its settlement agreement with GSK. An exclusive jurisdiction clause was accorded paramountcy over considerations of forum non conveniens. The risk of inconsistent findings was reduced where the central issue concerned the identification of the bacterial material used in DSM’s manufacturing.
7. Novartis and Institute of Microbiology and Epidemiology V Comptroller General
The Advocate General gave his opinion in relation to the way the duration of a Supplementary Protection Certificate (SPC) is to be calculated within the European Economic Area (EEA). The main issue was whether an authorisation to market granted under a State authority, which is not part of the EEA but that enjoys a special customs agreement with one of the EEA Member States, was to be taken into consideration in assessing the duration of the SPC.
Trade Marks (click the header at left to view all of the Trade Marks case notes)
8. Nichols PLC V Registrar of Trade Marks
The case concerned the registration of common surnames as trade marks. Under the UK Trade Mark Registry’s guidelines, a surname is assessed by looking at how common the name is in the London telephone directory.
9. Distinctiveness to be Viewed as a Whole: ECJ in SAT.1 V OHIM
The European Court of Justice laid down the correct test for determining the distinctiveness of a compound trade mark made up of several non-distinctive individual elements. It held that, for the purposes of Article 7 (1) (b) of Council Regulation No. 40/94, it is the overall perception of the whole mark by the relevant customer which is decisive in determining the distinctiveness of the mark in question.
10. Opposition Procedure, Article 58 and Article 108 of Regulation 40/94: Metro-Goldwyn -Mayer Lion Corp. V OHIM
In this case, the Court of First Instance defined the limits of Opposition procedure within the Regulation 40/94, so far it relates to the Opposition Division’s obligation to carry out examination in opposition proceedings, and the subsequent effect on Article 58 and Article 108 of the Regulation.
11. The Professional Golfer's Association of America V Provisions LLC.: is Charity Fair Use?
This case related to the use and registration of the domain name ryder2004.com. The main issues were whether (i) adding the date 2004 to the distinctive component of the Complainant’s trademark (Ryder) created a distinctive new name, or whether it was confusingly similar to the Complainant’s trade mark (ii) the Respondent had any rights or legitimate interests in the domain name (iii) the Respondent had registered and was using the disputed domain name in bad faith.
12. Applied Molecular Evolution V OHIM
This case raised the issue of the application of Article 7(1)(c) of Regulation No 40/94. This article provides a ground for absolute refusal to the registration of a trade mark when it is held to be descriptive of its related trade. The way descriptiveness is assessed was contested.
Acknowledgements
McDermott Will & Emery would like to acknowledge the invaluable contribution to the Bulletin made by Professor Michael Blakeney (Supervisor), Afe Komolafe, Malcolm Langley (Coordinator), Florian Leverve, James Mitchiner, Marisella Ouma, Rajesh Sagar and Daphne Zografos from the Queen Mary Intellectual Property Research Institute, University of London.
