European IP Bulletin, Issue 52


In Depth


A patent too far
In Les Laboratoires Servier v Apotex Inc [2008] EWCA Civ 445, the English Court of Appeal has dismissed an appeal against a finding of invalidity of a patent, holding that it was clearly unpatentable.

EPO Enlarged Board of Appeal invites the public to determine whether stem cells are contrary to morality
On 24 and 25 June 2008, in Public hearing on Wisconsin Alumni Research Foundation (WARF) Stem Cell patent application (G-02/06), the European Patent Office (EPO) sought guidance from the public in relation to patent applications involving inventions in the controversial area of stem cell patenting.

Trade Marks

No free ride for Mineral Spa
In Mülhens GmbH & Co KG v OHIM [2008] (T-93/06) unreported, the Court of First Instance (CFI) has upheld an opposition to an application to register the word mark MINERAL SPA as a Community trade mark for soaps and cosmetics, on the grounds that it would take unfair advantage of the reputation of the earlier Benelux word mark SPA registered for mineral water. The CFI held that the Applicant would take unfair advantage of the image of the earlier trade mark and the message conveyed by it.

“Euro” marks—distinctive character and descriptiveness
Eurohypo’s gallant (and expensive) campaign to register its name as a Community trade mark for financial services has failed. Whilst the European Court of Justice (ECJ) set aside the Court of First Instance (CFI) decision rejecting the mark on the basis that the CFI had assessed distinctiveness solely by reference to descriptiveness, the ECJ ultimately held that the mark EUROHYPO did indeed lack distinctive character under Article 7(1)(b) of the Community Trade Mark Regulation (40/94/EC).


Claim for implied assignment of copyright in software development agreement
On 4 June 2008, the English Court of Appeal upheld a ruling of Deputy Judge Robert Ham QC in Meridian International Services Ltd v Richardson [2008] EWCA Civ 609 that it was neither necessary, nor obvious, to imply into an oral agreement a term that the copyright in computer software for a financial forecasting system belonged to the claimant.

Domain Names

Criticism sites and free speech
In the recent case of Patel v Allos Therapeutics Inc (20/6/2008, unreported), the legitimacy of using trade marks in domain names for websites that criticise the activities of the trade mark holder was called into question. Striking out a challenge to a Uniform Dispute Resolution Policy ruling, the English High Court provides some rare judicial insight into the factors that may determine the legitimacy of trade mark use in domain names for criticism sites.

ICANN announces biggest expansion to internet in 40 years—recommendation for liberalisation of domain system approved
On 26 June 2008, of the Board of the Internet Corporation for Assigned Names and Numbers (ICANN) announced that it had approved a recommendation to liberalise the rules on the allocation of top level domains that could see a whole range of new domain names introduced to the internet’s addressing system from next year. This article examines the proposal and its effects.


Circumventing conditional access, “illicit device” and copyright
On 24 June 2008, in The Football Association Premier League Ltd v QC Leisure [2008] EWHC 1411, the FA Premier League suffered another potential setback in its campaign against pub landlords using foreign decoder cards in the United Kingdom to access foreign transmissions of live Premier League football matches, and the decoder suppliers. This article examines some of the highlights of the detailed judgment.

UEFA challenges the UK list of events of major importance to society
The Union of European Football Associations (UEFA), European football’s governing body, has put together submissions to the Court of First Instance challenging the designation of all matches in the European Championship as “listed events” in the United Kingdom. The UK list, formally approved by the Commission in October last year, includes the European Championship Finals as a whole (all 31 matches) and UEFA takes issue with the notion that matches in the group stages of the tournament, which do not even involve a national team from the United Kingdom, can somehow be considered as events of “major importance” for UK society.

Euro 2008—ambush marketers find holes in fan zone
Euro 2008 could not escape from ambush marketing. Although, as the tournament was worth an estimated two billion Swiss francs in media rights, tickets and sponsorship from Carlsberg, MasterCard and Adidas amongst others, the Union of European Football Associations (UEFA) did its utmost to prevent it from occurring. This article examines the steps taken by UEFA to safeguard its investments and combat ambush marketing.

Entertainment & Media

Gambling Commission FAQs on reverse auctions—distinguishing prize competitions from lotteries
The Gambling Commission has published guidance in the form of frequently asked questions (FAQs) on reverse auctions, setting out how it will determine whether a reverse auction is lawful under the Gambling Act 2005.

Band formation, ownership of songs and partnership
On 6 June 2008, in Kiley McPhail (aka Kiley Fitzgerald) v James Bourne[2008] EWHC 1235, the English High court upheld a settlement agreement resolving a dispute between the original members of the band Busted over the ownership of the rights in six songs. This article summarises the decision.

Advertising & Marketing

Regulation of unfair commercial practices in advertising—BCAP consultation and changes to CAP Code
Following the implementation of the Unfair Commercial Practices Directive (2005/29/EC) in the United Kingdom on 26 May 2008 by the Consumer Protection from Unfair Trading Regulations 2008 (CPRs), the Advertising Code of the Committee of Advertising Practice (CAP) has been revised to take into account the new Regulations. Now, the Broadcast Committee of Advertising Practice (BCAP) is consulting on its proposals to bring the BCAP TV and Radio Advertising Standards Codes into line with the CPRs. This article examines the proposed changes.