European IP Bulletin, Issue 48

Overview


In Depth

Trade Marks

European Court of Justice grants protection to registered designation of origin Parmigiano Reggiano

On 28 February 2008, the European Court of Justice (ECJ) ruled in European Commission v Federal Republic of Germany C-132/05 that protection granted to Parmigiano Reggiano extends to the word “Parmesan”. Francesco Mattina, a Partner in the Rome office of McDermott Will & Emery, outlines the decision.

MySpace.co.uk—Use or abuse?

In a Nominet Dispute Resolution Service decision, MySpace Inc., the US company behind the famous social networking website, has won the right to the domain name myspace.co.uk despite the domain name having been registered by another company six years prior to MySpace starting its business. Rohan Massey, a Partner in the London office of McDermott Will & Emery, outlines the decision.

Budweiser should have been wiser

In Budejovicky Budvar Narodni Podnik v Anheuser-Busch Inc [2008] EWHC 263(Ch), the English High Court has confirmed that the critical date for determination of statutory acquiescence by the proprietor of an earlier trade mark to the use of a later identical mark, is the date of registration of the mark.

Branding and parallel importations: further guidance from the Court of Appeal

In Boehringer Ingelheim v Swingward Limited, the Court of Appeal has given further guidance on parallel importation and trade mark infringement. The Court ruled that until co-branding or re-boxing of pharmaceutical products results in actual damage to the trade mark or the reputation held in the trade mark, the owners of the mark cannot stop parallel importations of their products. Moreover, the assessment of damage is essentially a question of fact to be determined on the basis of evidence provided by the trade mark owner. The mere act of re-branding and re-boxing by the parallel importer is not in itself sufficient to cause damage to the reputation held in the trade mark.

Media & Sports

Ricky “Hitman” Hatton out-punched by Frank Warren

On 20 December 2007, the English High Court delivered its judgment in an interim application filed in the case Frank Warren v The Random House Group Ltd [2007] EWHC 3062 (QB). The Court used legal principles to reinforce case management practices by ensuring that it restricted itself to the real matters at issue between the parties.

Competition & Commerce

Caution for competition defence

In The Football Association Premier League Limited & Others v LCD Publishing Limited [2007] EWHC 3171 (CH), the English High Court refused to allow an interim application to strike out an incomplete competition defence against the claims of copyright and trade mark infringement.

Confidentiality or disclosure—who is a better mate for competition and fair play?

In the case of Varec SA v Belgium, Diehl Remschied GmbH & Co intervening [2008] C-450/06, the European Court of Justice held that the relevant Council Directives had to be interpreted in such a way that the organisation responsible for the appraisal of decisions regarding contract award procedures had to guarantee the preservation of confidentiality and business secrecy of information communicated to it by the parties to an action. This is the case even though it might evaluate such information and deliberate upon it.

Patents

The BlackBerry struggle

In the recent case of Research In Motion UK Ltd v Visto Corp., [2008] EWHC 335 (Pat), the English High Court considered Research In Motion’s claim for revocation and non-infringement relating to a patent held by Visto. The court ruled that the patent was not valid, but would have been infringed if valid.

Legislation News

  • Proposed changes to copyright law
  • UK Government reveals plan for creative industries
  • Illegal downloaders to face UK broadband ban
  • Term extension for the protection of performances and sound recordings—European developments
  • Copyright in Sound Recordings and Performers‘ Rights (Term Extension) Bill 2007-08
  • Future of European-wide music licences for online exploitation—Commission publishes summary report and list of contributions to monitoring
  • The Advertising Standard Authority (ASA) says that gambling advertisements are a safe bet