European IP Bulletin, Issue 4

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1. Have a Break – The House of Lords refers to the ECJ in the Kit Kat Case

Rohan Massey of the London Office reports on the latest ruling in the long running Kit Kat case. On 25 July the House of Lords in Société des Produits Nestlé S.A. and Mars UK Limited referred a question to the ECJ regarding whether the distinctive character of a trade mark may be acquired following the use of that mark in conjunction with another mark.

2. Adoption of New Copyright Bill in Germany

Kathrin Tauber of the Munich Office discusses the changes to German copyright law brought about by the Bill on Copyright in the Information Society. The provisions of the Bill see a number of changes to the current German Copyright Act (Urheberrechtsgesetz), most of which address the need to adapt copyright law for the digital era.

3. House Of Lords Comments On Need For Trade Mark Use

In R v Johnstone [2003] UKHL 28, the House of Lords decided whether the fact that the defendant’s activities do not amount to civil trade mark infringement is a defence to criminal trade mark infringement under section 92 of the Trade Marks Act 1994.

4. The Trials Of Trade Mark Use

The Court of Appeal handed down judgment in Arsenal Football Club Plc v Matthew Reed [2003] EWCA Civ 96 on 21 May, following an appeal by the claimants against the decision of the High Court of 12 December 2002.

5. Report Of The Commission On Intellectual Property Rights: The UK Government Response

The UK Governments has given its official response to the final report of the Commission on Intellectual Property Rights.


6. Protected Designation Of Origin: Parma Ham And Grana Padano Cheese

Maintaining the quality and reputation of Grana Padano cheese and Parma ham justifies the rule that the product must be grated or sliced and packaged in the region of production.

7. Swedish Crackerbread To Be Re-Branded 27 Years After It Was Launched

Wasa, a subsidiary of the Italian bakery group Barilla, was ordered by a Swedish court to re-brand one of its most famous products, Moraknaecke, almost three decades after it was first launched.

8. Third Country Agreement Is Permissible

In Budejovický Budvar v Rudolf Ammersin Gmbh, C-216/01, Opinion of the Advocate General, following an action between a Czech brewery and an Austrian beer distribution company, the European Court of Justice is examining the protection of a mere geographical indication ‘Bud’. Precisely it has to consider if an international agreement between a Member State and a third country falls under Art. 307 EC. The Advocate General proposes that such agreement is permissible.

9. The European Commission Selects Eurid To Manage The .EU

The European Commission has taken steps towards the establishment of the .eu Top Level Domain (TLD) by selecting EURID (the European Registry for Internet Domains) as the official Registry for the .eu domain.

10. Data Protection Notification – Scam Update

Rohan Massey of the London Office reviews an interim hearing showing the Office of Fair Trading continuing to crack down on fraudsters holding themselves out as official organisations administering the Data Projection Act.

11. Withdrawal Of Marketing Authorisation May Not Entail Automatic Withdrawal Of Parallel Import License

Paranova Oy v Lakemedelsverket, C-113/01, ECJ [reference by supreme administrative court, Finland]


12. Court Order Made Against Unknown Person

In Bloomsbury Publishing Plc and JK Rowling v Newsgroup Newspapers Limited [2003] EWHC 1087 Ch, Laddie J held that court orders can be made against a person whose name is unknown where he can be identified by some other means.


13. Soya Patent Restricted By The EPO

The Opposition Division of the EPO has decided to limit the scope of the so called “Soya” patent, bearing number EP 301 749 B1, after conducting a public hearing in the opposition proceedings.


14. ECJ Rules Colours Per Se Are Registrable In Limited Circumstances

In Libertel Groep BV v Benelux-Merkenbureau, C-104/01, the European Court of Justice held that colours per se that are not applied for by reference to a specific surface can be registered as trade marks, but only in limited circumstances.

15. ECJ Rules Sounds Are Registrable

In Shield Mark BV v Joost Kist, C-283/01, Opinion of the Advocate General, sounds are registrable as long as their representation is “clear, precise, self-contained, easily accessible, intelligible, durable and objective”. In the AG’s opinion, this is clearly fulfilled if a sound is represented on a score but generally not if it is represented by onomatopoeia or a nominative succession of musical notes. This determination however always belongs to the national court.

16. Doublemint Refused By Advocate General

In OHIM v Wrigley Jr Co., C-191/01, Opinion of the Advocate General. After an application for a CTM for the mark “doublemint” was refused by OHIM, but then allowed by the CFI, OHIM appealed to the ECJ. The Advocate General has now issued his opinions suggesting the application should be dismissed.

17. Registrar’s Objections Upheld

In Dyson Ltd v Registrar of Trade Marks, [2003] EWHC 1062 (Ch), Dyson appealed to the High Court against the decision of the hearing officer in an ex parte hearing not to grant a trade mark on grounds of acquired distinctiveness against an examiner’s objection under ss.3(1)(a)-(c) and s.3(2)(b).


McDermott, Will & Emery would like to acknowledge the invaluable contribution to the Bulletin made by the following individuals at the Queen Mary Intellectual Property Research Institute: Andrew Bennett, Alan Cunningham, Estelle Derclaye, Alison Firth, Malcolm Langley, Florian Leverve, Aditya Nagarsheth, Anthony Robinson, Ilanah Simon, Daphne Zografos.