European IP Bulletin, Issue 14, July 2004
July 2004
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COPYRIGHT (click the header at left to view all of the Copyright case notes)
1. International Standards For The protection Of Broadcasters’ Rights To Be Updated
World Intellectual Property Organisation (WIPO) Member States make significant progress towards the adoption of a new international treaty on the protection of broadcasting organisations at the eleventh session of the Standing Committee on Copyright and Related Rights.
2. British Horseracing Board v William Hill
The case at issue involves the interpretation of the European Directive on the Legal Protection of Databases. The point raised was whether or not data copied to another medium and made available to the public is contrary to the Directive. It was held that this will depend on whether the data is a substantial part of the database or, if an insubstantial part, is utilised repeatedly.
3. Database Right – Protecting Information Or Effort?
The Advocate-General has given Opinions in a series of cases referred from the national courts of England, Sweden, Finland and Greece relating to the scope of the database right introduced by the European Commission (EC) in 1996. These are the first cases on the database right heard by the European Court of Justice (ECJ). The decisions are unlikely to quieten criticism that the database right extends to the protection of data itself, despite apparent assurances in the legislation.
4. Electrolux Settles Vacuum Cleaner Lawsuit
A settlement agreement has been reached in the vacuum cleaner trade secrets case between the Swedish company, Electrolux, and the British inventor, John North.
PATENTS (click the header at left to view all of the Patents case notes
5. BTG Asserts Patent Rights Over Technologies And Is Now Seeking Royalties
British Technology Group claims to own a number of patents that related to the process of downloading software and virus-protection over the internet. BTG is now in discussions with several companies regarding the payment of sums for past use as well as future royalties.
TRADE MARKS (click the header at left to view all of the Trade Marks case notes)
6. EC Accesses International Trademark Treaty
In a movement that will facilitate trade mark applications worldwide, the European Community (EC) is joining the Madrid Protocol administered by the World Intellectual Property Organization (WIPO). The measures will simplify procedures for trade mark applications and lower the costs of the international applications as well as reducing bureaucracy.
7. Privy Council: Entry In TM Register Is not Conclusive Evidence Of Validity Of Registration
The Privy Council in this case laid down that entry as proprietor of a trade mark in the Trade Mark Register is only a prima facie evidence and not conclusive evidence of the validity of registration. Moreover, before the opposing party has to discharge its onus to challenge the validity of registration, one must resort to all admissible evidence to ascertain whether there exists a valid registration of the mark evidencing proprietorship and subsequent assignments.
8. Picasso Estate Fails To Prevent Registration Of Picaro As A Community Trade Mark (CTM)
In Succession Picasso v OHIM - DaimlerChrysler (PICARO), the estate of the artist Pablo Picasso lost its appeal to prevent PICARO from being registered as a Community trade mark for vehicles. The case is of particular interest because of the Court of First Instance (CFI) comments on the scope of protection against given to famous mark and names. The ability of Board of Appeal to take well known facts into account was also considered.
9. Boehringer Ingelheim v Swingward
This case refers to the legitimacy of reboxing and oversticking pharmaceutical products that are bought in one EU Member State and then imported into another in which language, or market preferences, is different.
10. CFI Clarifies Opposition Procedure In Galaxia Case
Through this case, CFI emphasised the importance of asserting all necessary facts, arguments, law and evidence in support of the contentions of the party opposing grant of trade mark under Article 8 (1)(b) and Article 8 (5) of Regulation 40/94. It held that CFI in appeal can’t go beyond the factual and legal context of the dispute as it was brought before the Opposition Division and Board of Appeal of Office for the Harmonization of the Internal Market (OHIM).
11. Dutch Court Stops Imports Of Cheap AIDS Drugs
The Dutch court in the Hague has stopped the importation into Europe of anti-retroviral AIDS drugs supplied cheaply to African countries under Glaxo-Smith Kline’s (GSK) contribution to the Accelerating Access Initiative. The order was directed at a Dutch medical and hospital company, Asklepios, requiring them to identify their sources and to pass on profit figures to GSK. The court was able to use trade mark laws on parallel importation of the drugs to prevent the potential undermining of the programme.
12. Colour Combination Marks Registrable According To ECJ
In Heidelberger Bauchemie GmbH the European Court of Justice (ECJ) found that colour combination marks are registrable in principle, although in practice it make be difficult to prove that they are distinctive. In doing so, the ECJ commented on the compliance of the absolute grounds for the refusal of registration with the TRIPS Agreement.
ACKNOWLEDGEMENTS
McDermott Will & Emery would like to acknowledge the invaluable contribution to the Bulletin made by the following individuals at Queen Mary Intellectual Property Research Institute:
Andrew Bennett, Abigail A. Browne, John Cahir, Alan Cunningham, Professor, Mike Dowler, Alison Firth, Alexandra George, Celeste Hanley, Afe Komolafe, Malcolm Langley, Chris Lee, Florian Leverve, Judy McCullagh, Jane Molyneaux, Aditya Nagarsheth, Chiew Geik Ooi, Prabhuram Otharam,Barbara Shao-I Chen, Ilanah Simon, Matthew Smith and Sunethra Wimalasundera.
