European IP Bulletin, Issue 10



1. Proposal For A Directive On Enforcement Of Intellectual Property Rights

The European Parliament has voted in favour of a Directive to harmonise national laws on the means of enforcing intellectual property rights and to establish a framework for the exchange of information in order to help fight piracy and counterfeiting.


2. EMI Takes Action Against Beatles Album Remix

Record label EMI issues “cease and desist” orders to stop DJ Danger Mouse and record stores from selling the Grey Album, which uses unauthorised samples of the Beatles’ White Album.

3. Moral Rights: Anya v Wu

This decision shows how the moral right of an author to be identified attaches to copyright expression and not necessarily to underlying ideas. It also shows the usefulness of the Court’s power to strike out hopeless cases, and perhaps the difficulties faced by litigants in person.

4. Database Rights: Royal Mail v i-CD Publishing

The issues central to this case are how to create a balance between the commercial interests of a copyright holder and the public interest to be advanced through the use of a copyrighted database, and how far this balance affects the interpretation of the terms of a copyright licence.

5. Equitable Remuneration Defined: SENA v NOS

In this case, the ECJ laid down the essential principles relating to the interpretation of Article 8(2) of Community Directive 92/100 EEC of 19 November 1992 on rental and lending rights and on certain rights related to copyright in the field of intellectual property.


6. Electronic Filing Of International Patent Applications

From February 2004, applicants seeking patent protection in multiple countries through the Patent Cooperation Treaty (PCT) have the possibility to electronically file applications using the PCT-SAFE (Secure Applications Filed Electronically) system. This System offers applicants using the World Intellectual Property Organization (WIPO) as a receiving office a more economic, safe and quicker procedure to obtain patent protection.

7. Europe Revokes Rambus Patent

The revocation of a European patent held by Rambus Inc. has brought a reprieve for major memory chip manufacturers in Europe, who have been sued in various member states by Rambus Inc. for infringement of its patented technology. However, the ruling does not bring much hope for them in US, where FTC has already ruled in favour of Rambus Inc. despite the objections of fraud against it. The trials of the infringement case are slated to begin in the coming summer in the US.

8. CIPA Proposes Code Of Practice

A Code of Practice for pre-action conduct in intellectual property disputes was released by the Skrein Committee to assist and guide those who are dealing with intellectual property issues.


9. ECJ Refuses 3-Dimensional Mark: Deutsche SiSi-Werke v OHIM

The case between Deutsche SiSi-Werke v OHIM refers to the registration of a drinks packaging as a three-dimensional mark and the need for the mark to be distinctive so as to prevent a monopoly for a form of packaging. Under trade mark law, a mark has to be distinctive in order to qualify for trade mark protection.

10. New Regime For Registration Of .FR Domain Names

Association Française pour le Nommage Internet en Coopération (AFNIC) is introducing a new regime for registration of .fr domain names. Under the new regime, applications will be considered on a “first come, first served” basis, hence abolishing the need to prove ownership of the domain name.

11. Scottish & Newcastle To Stop Brewing Newcastle Brown Ale in Newcastle?

Rumours that Scottish & Newcastle, the brewers of Newcastle Brown Ale, are to move production of “broon” (as it is affectionately known) from its Tyne Brewery in Newcastle could have serious implications for its intellectual property assets because Scottish & Newcastle is the named producer of the Newcastle Brown Ale geographical indication.


McDermott, Will & Emery would like to acknowledge the invaluable contribution to the Bulletin made by Lucas Arrivillaga, Alison Firth, Afegieme Komolafe, Malcolm Langley, Rajesh Sagar, Ilanah Simon and Daphne Zografos from the Queen Mary Intellectual Property Research Institute, University of London.