European IP Bulletin, Issue 28


Hot Topics

1. World Trade Organisation Members Agree to Amend the Trips Agreement on Patents and Public Health

The decision of the General Council of 6 December 2005 on the amendment of the TRIPS Agreement makes the flexibilities contained in the 2003 decision on patents and public health permanent. This in effect will lead to the first amendment of a core WTO Agreement.

2. UK Chancellor Announces Intellectual Property Review

As part of his Pre-Budget Report Package, the Chancellor of the Exchequer, Gordon Brown, has announced the launch of an independent review of intellectual property in the UK, to be headed by the former editor of the Financial Times.


3. Sony BMG’s Anti-Piracy Software in Big Trouble

Sony BMG’s trouble started immediately following Windows programming expert Mark Russinovich’s discovery that Sony’s anti-piracy software used virus-like techniques to stop illegal copies being made. There have been several class action lawsuits launched against both Sony BMG and First4Internet. Widespread pressure has made Sony BMG take actions to settle the dispute.

4. Evaluation of EU Rules on Databases

The European Commission has published an evaluation of the protection EU law gives to databases. With disappointing findings, one of the proposed options is to repeal the whole Database Directive and allow Member States to revert to their former legislation.

5. Online Management of Music Rights: the EU Commission’s Impact Assessment

On 11 October 2005, the European Commission released an Impact Assessment to accompany the Recommendation on Collective Cross-border Management of Copyright and Related Rights for Legitimate Online Music Services. The document summarised the discussion on collective management in the online context and explained the possible effects of the Recommendation and the Commission’s broader initiatives.


6. Supplementary Protection Certificates for Combination Medicinal Products

On 24 November 2005, Advocate General Léger delivered an opinion concerning the construction of Article 1(b) of Council Regulation 1768/92/EEC concerning the creation of a supplementary protection certificate for medicinal products and provided an interpretation of the concept of “combination of active ingredients of a medicinal product”.

7. Roche Makes U-Turn on Tamiflu Patent

Roche, the Swiss drugs manufacturing company, has bowed to international pressure and agreed to meet with generic manufacturers with a view to sub-licensing its patent for the antiviral drug Tamiflu in the wake of a possible bird flu pandemic.

8. European Telecommunications Standards Institute Reviews its IPR Policy to Prevent Patent Ambushes

Standard-setting bodies are coming under increasing pressure to review and strengthen their IP Rights policies to prevent “patent ambushes”. After the reported inadequacy of the IPR policy of the JEDEC Solid State Technology Association, which is responsible for setting standards for semiconductor industry, the European Telecommunications Standards Institute (ETSI) came under investigation by the European Commission.


9. When is a Descriptive Mark Not a Descriptive Mark?

The Advocate-General has handed down some valuable guidance on the examination of potentially descriptive foreign language trade marks by national trade mark authorities. Importantly, if the Opinion is adopted by the full Court, then national examiners will not be allowed to take into account the possible restrictions on inter-state trade.

10. Starbucks Regains the Right to Use its Brand in Russia

On 17 November 2005, Rospatent, Russia’s intellectual property agency, announced that Starbucks Corp. had regained the right to use its brand on coffee houses in Russia. The decision followed a legal battle with a trade mark squatter who was asking $600,000 for the logo.

11. Federal Republic of Germany and Kingdom of Denmark v Commission of the European Communities

On 25 October 2005, Germany and Denmark brought an action for the annulment of the Commission’s decision to register Feta as a protectable designation of origin for Greece, on the basis that Feta had become a generic name. The European Court of Justice ruled that Feta is protectable under the European Geographical Indication registration regime.