European IP Bulletin, Issue 15


Hot Topics

1. UK Launches National Intellectual Property Crime Stratety

Piracy and counterfeiting costs the economy billions of pounds and undermines the success of many companies. In the UK, the estimated loss to the economy has doubled over the last five years. On 10 August 2004, Industry Minister, Jacqui Smith, launched a blueprint to crackdown on the trade in fake goods as she unveiled the first National Intellectual Property Crime Strategy.

2. Protection of Geographical Indications and Designations of Origin In The European Union

Geographical Indications and Designations of Origin are protected at both Community and international level. Patricia Müller Chosco, an intern in McDermott Will & Emery’s Munich office outlines the framework of protection and considers the development of the law.


3. Sony Playstation Copy Protection Upheld: Extra-Territorial Arguments Rejected

The UK’s Copyright Designs and Patents Act 1988 was amended in 2003 to provide stronger protection against circumvention of the ‘technological measures’ used by copyright owners to prevent unauthorised copying. Mr Justice Laddie considered the provisions in a case brought by Sony.

4. Lambretta Clothing Company v Teddy Smith

The infringement of copyright in a design document and the interpretation of s.51 Copyright Designs and Patents Act 1988 (CDPA) which provides defences to infringement of design documents and models, are addressed in this recent decision of the Court of Appeal.

5. EU Commission Launches Consultation To Harmonise Copyright and Related Rights Legislation

The European Commission announced that it has launched consultations to review EU legislation on copyright and related rights in order to improve the operation of copyright law and to safeguard the functioning of the Internal Market.


6. The First Anit-Suite Injunction In a Patent Case Before the Dutch Court of the Hague

The President of the Dutch Court of the Hague granted an injunction, the first of its kind, against Mendinol, effectively preventing them from bringing any further actions for patent infringement against Cordis. Various summary requests for interim injunctions had been brought by Mendinol against Cordis in relation to its family of patents.

7. Sandoz GMBH V Roche Diagnostic GMBH

The main issue in this case related to the determination of inventiveness. It addressed the definition of the person skilled in the art and his relation to prior art.

8. Patent and Design Rights In Ultraframe V Eurocell: One and One Makes Eleven

This case presents a perfect example whereby a party failing to win its battle for patent infringement claim, secured a ruling in its favour for infringement of its design rights. Apart from emphasising the strategic importance of using two IP rights for litigation, this case also encapsulates interpretation of various concepts of design rights and related exceptions.

9. Patents Act Receives Royal Assent

The UK Patents Act 2004 has received Royal Assent. The 2004 Act updates the Patents Act 1977, bringing the UK patents system in line with the revised European Patent Convention. It also introduces measures designed to assist in the enforcement of patent disputes between patent proprietors and third parties.

Trade Marks

10. Coffee Visits CFI In Consumer Interest

Through this preliminary ruling the Court of First Instance gave a harmonious interpretation of Article 28 of EC and Article 2 of Directive 1999/4/EC relating to coffee extracts and chicory extracts, and of Article 18 of Directive 2000/13/EC on the approximation of the laws of the Member States relating to the labelling, presentation and advertising of foodstuffs.

11. ECJ Allows Substituion Of Opponent In CTM Dispute

In Gerolsteiner Brunnen GmbH & Co v OHIM – Kerry Spring the Court of First Instance considered whether the new owner of a trade mark, which is subject to a Community trade mark opposition, may be substituted as a party to the opposition once the trade mark has changed hands.


McDermott Will & Emery would like to acknowledge the invaluable contribution to the Bulletin made by Alison Firth, Afe Komolafe, Malcolm Langley, YunJoo Lee, Florian Leverve, James Mitchiner, Marisella Ouma, Rajesh Sagar, Ilanah Simon and Daphne Zografos from the Queen Mary Intellectual Property Research Institute, University of London.