European IP Bulletin, Issue 19

Overview


Hot Topics

1. Computer Implemented Inventions in Europe

The draft directive on computer implemented inventions hangs in the balance after a parliamentary vote set the law making process back. The intention of the parliamentary committee which took the vote was to allow further concessions to anti-patent lobby groups but the EU and the technology industry has reacted with a call for the draft directive to be withdrawn altogether, so that the debate can continue without drawing out the legal uncertainty. The vote came as a response to prolonged and emotional lobbying by the anti-patent groups and threatens to turn the Directive on its head by ensuring it fails to meet any of its stated objectives.

2. EU Rules Against Microsoft in its Bid to Suspend Enforcement of Windows Media Player

On 22 December 2004, the European Court of First Instance ruled that the European Commission was justified in imposing the interim measures against Microsoft following a five year anti-trust investigation. The Court rejected Microsoft’s request for a provisional suspension of the obligation to release fundamental information of its operating systems to rival software producers.

Copyright

3. P2P Music Copyright Cases From Norway, Germany, Korea & US

Following the Napster ruling, courts around the world are defining the rules regarding file sharing P2P services and their members. The critical questions relate to service provider liability and whether the service providers have the obligation to disclose the identities of their users.

4. Copyright Levy To Be Applied To All German Computers

A German court has ordered that computer manufacturer Fujitsu Siemens pay a copyright levy on every computer sold in Germany. There are plans for this decision to be applied to sales by all German computer manufacturers.

5. Spain, Portugal and Ireland Before the European Court of Justice Over The Public Lending Right

The European Commission has referred Spain, Ireland and Portugal to the European Court of Justice (ECJ) for failure to implement the provisions of the Council Directive 92/100/EEC on public lending rights in full into their national legislation. The Commission has also referred Portugal to the ECJ for incorrectly implementing the rental rights contained in the same directive.

Patents

6. German Court Shaves Off Gillette for Energizer

After a favourable US court ruling in favour of Energizer, a German court has recently ruled that the Energizer razor “Quattro” does not infringe the three-blade patented technology of Gillette. This case has again reinforced the commercial utility to companies of intellectual property rights and patents in capturing and maintaining market shares and having a competitive and technical advantage over rivals.

7. Google Trade Mark Battles

A Judge for the US District Court for the Eastern District of Virginia has found that, as a matter of law, it is not trade mark infringement to use trade marks as keywords to trigger advertising. This is in direct contrast to the holdings of the Nanterre court in France which has held the use of trade marks as keywords to be an infringement of trade mark.

Trademarks

8. Opinion of Advocate General in Nestle V Mars UK

The Advocate General has given his opinion as to whether a word sequence as part of a word mark can acquire distinctive character for the purposes of registration as a trade mark. It was held that in proving that the distinctive character of a mark has been acquired through use, where the mark is a composite mark, the relevant consumer groups must be shown to understand that the element in question, if used separately, designates a product as originating from a specific undertaking, thus distinguishing it from products of other undertakings.

9. Bongrain Trade Mark Application

On 17 December 2004, the Civil Court of Appeal upheld the decision of the Hearing Officer acting for the Registrar of Trade Marks who refused the Bongrain trade mark application. Trade mark protection was sought for a series of two three-dimensional marks for the shape of a cheese.

10. El Corte Ingles V OHIM (Emilio Pucci)

The European Court of First Instance has given judgment on the claim brought by El Corte Inglés against the Office for Harmonisation in the Internal Market. Within its decision, the European Court confirmed ECJ obiter dictum on the extent of ‚complementary character‘ and ‚reputation‘ for products appertaining to class 3, 18, 24 and 25 of the Nice classification.


Acknowledgements

McDermott, Will & Emery would like to acknowledge the invaluable contribution to the Bulletin made by Angela Adrian, Professor Michael Blakeney (Supervisor), Jerry Hsiao, Afe Komolafe, Malcolm Langley (Coordinator), Tina Loverdou, Maria Mercedes, Marisella Ouma, Rajesh Sagar, Ilanah Simon, Pekka Valo and Daphne Zografos from the Queen Mary Intellectual Property Research Institute, University of London.