European IP Bulletin – Issue 73

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Overview


In Depth

COMMERCIAL

CPC Group Ltd v Qatari Diar Real Estate Inv Co.:  “Reasonable” and “Best” Endeavours

The case provides a useful review of the meaning of „reasonable endeavours“ and „best endeavours“, as well as the meaning of acting in good faith.

CONFIDENTIALITY

Robert Andrew Jones v Ricoh UK Ltd: Scope of Confidentiality Agreements

The High Court of England and Wales has ruled that a clause to protect confidential information was so wide that it went “far beyond any possible view of what could be needed for that purpose”. It was found to be in breach of Article 101 of the Treaty of the Functioning of the European Union and was an unreasonable restraint of trade.

DESIGNS

Shenzhen Taiden Industrial Co Ltd v Office of Harmonization for the Internal Market: Individual Character and Degree of Freedom of The Designer

The General Court has dismissed an appeal by Shenzhen Taiden Industrial Co Ltd in relation to the validity of its Community design for a „conference unit“ on the grounds that Shenzhen’s design did not produce a different overall impression on the informed user when compared with an earlier design owned by Bosch Security Systems BV. As a result, it lacked individual character within the meaning of Article 6 of the Community Design Regulation (6/2002/EC).

TRADE MARKS

FreemantleMedia Ltd and 19 TV Ltd (MODEL IDOL and POP IDOL): Moderately Similar Marks and Likelihood of Confusion

Freemantle and 19 TV filed an opposition against the sign MODEL IDOL. The Opposition was based on three trade mark registrations for POP IDOL, word marks and figurative marks, in various classes. The opposition succeeded in respect of the Section 5(2) claim, but only in respect of „advertising services“. The opposition failed on the other claims.

O2 Holdings Ltd’s Application for WE’RE BETTER, CONNECTED: Registrability of Slogans

The trade mark application by O2 Holdings Ltd for WE’RE BETTER, CONNECTED was partially refused registration due to the lack of distinctive character. The recent judgment of the European Court of Justice in Audi v Office of Harmonization for the Internal Market C-398/08 was considered carefully and followed when assessing whether the phrase was capable of denoting origin.

European Court of Justice Reference on Class Headings in Trade Mark Specification

Questions have been referred to the European Court of Justice as to as to the degree of clarity and precision required in a specification of goods and services in a trade mark application.

Best Buy Co Inc v Worldwide Sales Corporation España SL:  Threats, Community Trade Marks and Without Prejudice Correspondence

Mr Justice Floyd has held that for a threat to be actionable in the UK under the Trade marks Act 1994, a threat must relate to proceedings in the United Kingdom. The case also explores the scope of the without prejudice rule in the context of correspondence relating to settlement negotiations

PATENTS

Marathon Oil Company’s Patent Application: Computer-Related Inventions and the Contribution Approach

Despite the attempt of the Court of Appeal of England and Wales in Symbian Ltd v Comptroller General of Patents to reconcile the approaches of the United Kingdom Intellectual Property Office (UK IPO) and the European Patent Office (EPO) to inherent patentability, they are again at odds as the UK IPO applies the “Aerotel/Macrossan” test, while a recent opinion of the EPO’s Enlarged Board of Appeal (G_0003/08) confirmed that, for the EPO, novelty has no place in such an assessment.

Occlutech GmbH v AGA Medical Corp: Claim Construction

Dismissing an appeal from a decision of Mr Justice Mann, the Court of Appeal of England and Wales has decided that, although in a suitable context, the word „clamp“ could be understood to carry an extended meaning, in the context of the patent in suit, a „clamp“ meant a „clamp“ in the everyday sense of the word and not an all-inclusive term for means of securing things together.

The Community/European Union Patent: Where Does it Now Stand?

On 2 July 2010, the Advocates-General of the Court of Justice of the European Union released their preliminary opinion on the legality of the proposed European Union Patent (EUP). They stated that the draft Agreement for the patent system did not guarantee the full application and observance of the pre-eminence of European Union law and did not provide for sufficient protection of litigants if the Court itself had failed to observe European Union law. In addition, the language regime did not protect sufficiently against discrimination of litigators from certain member states and the draft Agreement did not allow for effective control of the European Patent Office’s administrative functions in respect of the granting of the EUP.

COMMUNICATIONS AND NEW MEDIA

Ryanair Ltd v Billigfluege.de GmbH: Enforceability of Exclusive Jurisdiction Clauses in Website Terms and Conditions

The Irish High Court has held that an exclusive jurisdiction clause in the terms and conditions of a website was binding on the user of the website, despite the user disputing the validity of the terms and conditions.

SPORT

Proactive Sports Management Ltd v Wayne Rooney: Image Rights Representation Agreement and Restraint of Trade

The High Court of England and Wales has held that an Image Rights Representation Agreement made between Proactive Sports Management Ltd and Stoneygate 48 Ltd, the company to which Wayne Rooney had assigned his image rights, was unenforceable as it was in restraint of trade.

ADVERTISING AND MARKETING

Advertising Standards Authority Adjudication on Orange Personal Communications Services Ltd: Comparative Advertising and Statistical Substantiation

Ambiguous claims based on statistics that were not directly comparable with those of competitors because of differing data-gathering methodologies have been found in breach of the CAP Code.