European IP Bulletin, Issue 41

Overview


In Depth

Patents

Van Generics Ltd et al. V H. Lundbeck A/S

In van Generics Limited et al. v H. Lundbeck A/S [2007] EWHC 1040 (Pat), Lundbeck obtained a patent on Escitalopram, a component of the previously patented drug Citalopram. Generics et al. asserted that the patent lacks novelty, was obvious and insufficient.

Comptroller can raise additional grounds of objection

In the case of Raytheon v Comptroller General of Patents, Designs and Trade marks, [2007] EWHC 1230 (Pat), Kitchin J allowed the Comptroller to raise additional grounds of objection against a patent application on appeal even though they had not originally been argued during the examination procedure.

Trademarks & Domain Names

Consent, trade mark infringement and passing off: Anglo-Dutch Ltd paint themselves into a corner

Trade mark infringement and passing off can be established where a party, who has an agreement with the trade mark owner, uses the marks and embarks on acts not covered by that agreement, without the trade mark owner’s consent.

Clear identification of trade marks in Oppositions considered by CFI

The Court of First Instance (CFI) in the Black Decker Corporation v Office for Harmonisation in the Internal Market (OHIM) allowed the submission of documents accompanying a notice of opposition by means of facsimile after the limitation period had expired. The judgement gave clear criteria for accepting such a notice of opposition.

Trademark Dilution – the UK Approach

On May 15 2007, Jacob LJ addressed several important questions regarding the s.5(3) of the Trade Mark Act 1994 and Art.4(4)(a) of the Trade Marks Directive in the case Intel Corporation Inc v CPM United Kingdom Ltd. [2007] EWCA Civ 431.

A question of distinctiveness in three dimensional marks

In Procter & Gamble Company v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (Joined Cases T-241/05, T-262/05, T-263/05, T-264/05, T-346/05, T-347/05, T-29/06, T-30/06, T-31/06), the Court of First Instance of the European Communities (Fourth Chamber) heard an appeal against the decision of OHIM to uphold the examiner’s refusal to register three dimensional trade marks in respect of detergent products. The Court confirmed the Board’s decision and maintained that the trade mark applications were devoid of any distinctive character and thus not registrable pursuant to Article 7(1)(b) of Regulation (EC) No 40/94.

E-Commerce

The licensing of online gambling

The Gambling Commission has published a new regulatory regime for remote gambling, which contains provisions for licensing of online casinos. However, other countries remain wary of remote gambling and continue to take a more stringent approach to licensing.

Enforcement & Procedure

Damages are set in the CD WOW dispute

The UK record industry was awarded significant damages following the High Court decision of March 2007 against CD-WOW, when CD-WOW’s practice of importing cheap CDs and DVDs from Asia and selling them over the internet in UK and Ireland was deemed illegal.

Parliamentary Committee calls for more creativity in balancing Copyright Law to promote Creative Industries.

The House of Commons committee on Culture, Media and Sport in May 2007 has published a report entitled „New Media and the Creative Industries“. The report deals mainly with the challenges created by recent technological developments in the production, supply and consumption of creative media. The report also raises issues of copyright law and its enforcement with regard to the creative industries and makes specific recommendations for reforming the law and for strengthening its enforcement as a way of creating a new balance between the needs of creators and consumers of media content.

Legislation

  • Draft Trade Marks (Relative Grounds) Order 2007
  • Report on the Review of the Copyright Tribunal
  • Indications from the WIPO Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT)