European IP Bulletin, Issue 23


Hot Topics

1. The Many Parts of a Patent

Stephen J. Akerley and Bijal V. Vakil, partners in the Intellectual Property Department of McDermott Will & Emery LLP in the Firm’s Silicon Valley office, provide an explanation of patents, patent protection and increasing the value of a firm’s investments.

2. The Douglases & OK! v Hello! Ltd

In the latest decision Douglas & OK! v Hello!, the Court of Appeal reviewed and developed the laws of privacy and confidential information.

3. What Future for a Treaty on the Protection of Broadcasting Organisations?

The second revised consolidated draft text for a WIPO treaty on the Protection of Broadcasting Organisations was released in early May 2005 and contains the developments which emerged from the twelfth session of the Standing Committee on Copyright and Related Rights.

4. BHB Enterprises PLC -v- Victor Chandler (International) Limited – Action and Counterclaim – Cost to Produce Bears No Resemblance to Value

This decision of the English High Court examines the effect of the European Court of Justice’s decision in William Hill v BHBE in relation to the question of whether a database is entitled to sui generis intellectual property rights under the Database Directive, and the effect of the decision on trade in data in the EC.


5. Has Interlego been Waltered Down?

In deciding that copyright can subsist in the annotations made to an ancient piece of music by a modern scholarly effort, the Court of Appeal has confirmed that criticisms levelled against the Privy Council decision in Interlego v Tyco [1988] RPC 343 are justified based on the continued application of Walter v Lane [1900] AC 539.

6. Sony BMG Tests ‚Sterile Burning’ to Bar Unlimited CD Burning

Sony has released at least 10 commercial titles to test the new technology solution known as ‘sterile burning’, allowing consumers to make limited copies of protected discs but blocking them from making any further copies. Sony says this solution will not violate the fair-use doctrine.


7. Nokia Commits Not to Assert Any of its Patents Against the Linux Kernel

Nokia Corporation has made a legally binding commitment not to assert any of its patents against the Linux Kernel. In making this declaration Nokia has become the first company to make a binding commitment in support of the Linux open source environment.

8. Tercia Inc v Avecia Ltd – Summary Judgement in Patent Disputes

This decision provides an insight into the principles, and their application, in respect of the grant or dismissal of an application for summary judgement in a patent dispute. After a careful analysis, the Court rejected the application of Avecia Ltd seeking relief for revocation of a patent held by Genentech.


9. Celltech v OHIM

The Court of First Instance delivered a judgment clarifying the distinctiveness requirement under Article 7(1)(b) of EC Regulation No. 40/94. It was held that when considering whether or not a mark consisting of a combination of two simple English words lacks distinctive character, the mark must be evaluated as a whole and not by looking at the separate meanings of the words.

10. Budweiser Budvar’s EU Victory

The European Union recognized the Czech brewery Budweiser Budvar’s claim for protection of its beer under one of the Union’s two regional designations when the Czech Republic joined the bloc last May.

11. WIPO Recommends Uniform IP Protection Mechanism to Regulate Domain Name Registrations

On June 1, 2005, the World Intellectual Property Organisation recommended the introduction of a uniform intellectual property protection mechanism with a view to controlling unauthorised registration of domain names by cyber-squatters in all new generic Top-Level Domains (gTLDs).

12. CFI Delivers First Substantial Dilution Decision

In Spa Monopole, compagnie fermiere de Spa SA/NV v OHIM, Case T-67/04, the Court of First Instance has provided the first definitions of unfair advantage and detriment under the Community Trade Mark (CTM) Regulation. The Court also discusses the controversial issue of whether actual dilution is necessary in order to succeed in European dilution proceedings.


McDermott Will & Emery would like to acknowledge the invaluable contribution to the Bulletin made by Professor Michael Blakeney, Angel Adrian, Maria Mercedes Frabboni, Jerry Hsiao, Afe Komolafe, Malcolm Langley, Tina Loverdou, James Mitchiner, Rajesh Sagar, Ken Shao, Ilanah Simon and Pekka Valo from the Queen Mary Intellectual Property Research Institute, University of London.