European IP Bulletin, Issue 12

Overview


INTELLECTUAL PROPERTY

1. New EC Technology Transfer regime

The revised EC TECHNOLOGY TRANSFER BLOCK EXEMPTION REGULATION („TTBE“) came into force on 1 May, 2004. The TTBE is the European Commission’s „safe harbour“ from the application of Article 81 EC for certain technology licences (patent/know how licences).

2. Naomi’s Privacy – Breach of Confidence

This is the first media case to have reached the House of Lords following implementation of the Human Rights Act 1998 and is therefore significant. However, creation of a “back door privacy law” as a result of this judgment appears unlikely. Clare Sellars, an Associate in McDermott Will & Emery’s London office, reviews this case which, it is claimed, has extended the existing law of breach of confidence in English law.

3. Ukraine Targeted By USTR In 2004 “Special 301” Report

The Office of the United States Trade Representative (USTR) released its annual report on the adequacy and effectiveness of intellectual property rights relating to its industries around the globe. IPR protection in the Ukraine remained inadequate and would continue to be designated a Priority Foreign Country.


COPYRIGHT

4. ECJ Judgment In IMS Health v NDC Health

In this case, the European Court of Justice has confirmed that in the absence of an objective reason, an intellectual property right owner enjoying a dominant position on a given market does not have the right to refuse to license a competitor, if such a refusal will block the competitor’s access into the market and stifle innovation.

5. Communication And Consultation on Copyrights And Related Rights In The Internal Market

The European Commission will adopt Community legislation on the collective management of rights, especially with respect to the governance of collecting agencies. An interoperable Digital Rights Management system will be instituted along with a Community-wide licensing scheme for the exploitation of these rights.

6. New Software Makes It Possible To Copy Music From Protected CDs

A computer magazine and a software company in Germany have released a software that makes it possible to bypass any form of anti-copying technology used to protect music CDs.


PATENTS

7. Supplementary Protection Certificates: Application Of Pharmacia Italia SPA

The Advocate-General disappointed many pharmaceutical companies when he confirmed that references to first authorisation of medicinal products in Council Regulation No. 1768/92 providing for supplementary protection certificates include reference to both human and veterinary applications of medicinal products. Pharmacia Italia SPA, therefore, lost its opportunity to obtain extension of its patent term.


TRADE MARKS

8. Challenge To The Ownership Of The State Symbols Of Former East Germany

The registration of the state symbols of the former East Germany, including the iconic hammer and compass symbol, is to be challenged before the German Patent Office.

9. Generic To Whom? Björnekulla Fruktindustrier v Procordia Food

In this case, the European Court of Justice has considered if the determination of whether a mark has become generic under Article 12(2)(a) of Directive 89/104 must be made through the eyes of consumers or from the perspective of those in the trade.

10. Imitation Of International Emblems: Concept-Anlagen v OHIM

Under Community trade mark law, marks that consist of important state symbols or imitations of them from a heraldic point of view which have not been authorised by the competent authority are to be refused registration pursuant to the Paris Convention.

11. Construction Of Trade Mark Agreements: Apple Corps v Apple Computer

In what could prove to be the opening moves for future litigation for breach of contract, the Trade Mark Agreement between Apple Corps and Apple Computer was brought before the English High Court to determine where the contract was made and which jurisdiction applies, given that neither was specified in the agreement.


ACKNOWLEDGEMENTS

McDermott, Will & Emery would like to acknowledge the invaluable contribution to the Bulletin made by Angel Adrian, Lucas Arrivillaga, Afegieme Komolafe, Malcolm Langley, YunJoo Lee, James Mitchiner, Ilanah Simon and Daphne Zografos from the Queen Mary Intellectual Property Research Institute, University of London.