European IP Bulletin – Issue 76

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Overview


In Depth

COPYRIGHT

Copyright Designs and Patents Act 1988 (Amendment): PPL Licence Exemptions Abolished

The Copyright Designs and Patents Act (CDPA) 1988 (Amendment) Regulations 2010/2694 has abolished, as of 1 January 2011, exemptions in the CDPA that allowed charitable and not-for-profit organisations to play recorded or broadcast music in public without obtaining a PPL licence.

The Newspaper Licensing Agency Ltd v Meltwater Holding BV: Online Commercial Media Monitoring Services and The End User Licence Debate

This ruling from Mrs Justice Proudman confirms that businesses using an online commercial media monitoring service require a licence from the Newspaper Licensing Agency Ltd. This is because, when they receive email alerts containing headlines and extracts from newspaper articles, they effectively make copies of such headlines and extracts on their computers.

ITV Broadcasting Ltd v TV Catch Up Ltd: Communication to The Public of a Broadcast

Refusing the Defendant’s application for summary judgment in ITV Broadcasting Ltd v TV Catch Up Ltd [2010] EWHC 3063 (Ch), Mr Justice Kitchin has held that, as regards broadcasts, the meaning of communication to the public within Section 20 of the Copyright Designs and Patents Act 1988 is not limited to broadcasts but extends to all communications by electronic means, whether one-to-one or one-to-many. As such, ITV, Channel 4 and Channel 5 had a real prospect of proving at trial that the Defendant’s “catch-up TV” service infringed the copyrights in broadcasts of television programmes by converting them to a flash stream accessible to members signed up to receive the stream through the Defendant’s website.

TRADE MARKS

La Chemise Lacoste SA and Baker Street Clothing Ltd (ALLIGATOR): Word and Device Marks, Conceptual Similarity and Likelihood of Confusion

The application for ALLIGATOR was opposed by Lacoste SA in La Chemise Lacoste SA and Baker Street Clothing Ltd (ALLIGATOR) BL 0 333 10 on the basis of its earlier Community and UK registered device marks featuring the well-known Lacoste crocodilian image. The opposition succeeded on the ground of likelihood of confusion arising between the earlier device marks and the ALLIGATOR word mark. Mr Landau considered that “the average relevant consumer will believe that goods and services sold under the respective trade marks emanate from the same or an economically linked undertaking”. On appeal, Mr Hobbs QC overturned that decision, finding that the marks were not linkable by any conceptual similarity and, accordingly, there was no likelihood of confusion between them.

National Guild of Removers & Storers Ltd v Christopher Silveria: Damages Assessed on The “User” Principle

In National Guild of Removers & Storers Ltd v Christopher Silveria [2010] EWPCC 15, His Honour Judge Birss QC, sitting in the Patents County Court, has found that damages assessed on the “user” principle are available in cases of trade mark infringement and passing off in the same way as in patent infringement cases. In other words, there is no need for any lost sales to have occurred, damages can be assessed by reference to the amount the infringer would have had to pay in fees to the trade mark proprietor had the infringer acquired the rights to use the name or trade mark in question lawfully (i.e., a reasonable royalty basis).

Sony Ericsson Mobile Communications AB v OHIM: Movement Mark and Graphic Representation

In an application concerning a movement mark (Sony Ericsson Mobile Communications AB v OHIM R443/2010-2), the Second Board of Appeal has annulled the refusal by the Office for Harmonization in the Internal Market (OHIM) to register a mark on behalf of Sony Ericsson, holding that the mark in conjunction with its description met the criteria set out in Article 4 of the Community Trade Mark Regulation (207/09/EC).

Codorniu Napa Inc v OHIM: Figurative Marks, Wine and Likelihood of Confusion

In Codorniu Napa Inc v OHIM T-35/08 23 November 2010 (unreported). The EU General Court has found a likelihood of confusion between two figurative marks on the basis of the strong phonetic similarity of the word components ARTESA and ARTESO and the fact that the marks related to identical goods, namely wine, which would commonly be referred to by the average consumer verbally.

Specsavers International Healthcare Ltd v Asda Stores Ltd: Asda “Rides on The Coat-Tails” of Specsavers’ Reputation

In October 2009, Asda re-launched its optician services. The logo and straplines used by Asda were alleged by Specsavers to infringe its SPECSAVERS trade marks (word and device) under Articles 9(1)(b) and 9(1)(c) of the Community Trade Mark Regulation

PATENTS

Long v Comptroller General of Patents: Insufficiency and Ambiguity

On appeal in the High Court of England and Wales, it was noted that while it is sometimes permissible to describe an invention by reference to the result to be achieved, it was not permissible in this case because there was a lack of information regarding how the result was to be achieved.

Unilever plc v Ian Alexander Shanks: Calculating Employee Compensation

Lord Justice Jacob has clarified the mechanism by which an inventor’s compensation is calculated, specifically where an “outstanding invention” is assigned between companies within the same group. Jacob LJ held that the disposal in Section 41 of the Patents Act 1977 referred to a real disposal and to a real person

DOMAIN NAMES

Nominet Opens Registration of Short .uk Domains: Registered Rights Sunrise

The initial sunrise period for registration of “short” domain names in the United Kingdom was opened by Nominet, the registry for .uk domain names, on 1 December 2010 and closed on 17 January 2011. “Short” domain names include two letter domain names and those which consist of a current second level domain, such as gov.co.uk.

COMMERCIAL

OFT Report on Price Framing: Common Pricing Practices and The CPRs

On 3 December 2010 the Office of Fair Trading published a much anticipated Report on Price Framing in which it sets out its findings on how the Consumer Protection from Unfair Trading Regulations 2008 (CPRs) impact on specific pricing practices identified by psychological and economic studies as being potentially detrimental to consumers

Eminence Property Developments Ltd v Kevin Heaney:  – “… A Mere Honest Misapprehension… Will Not Justify a Charge of Repudiation“

A mistake in calculating the number of days (counting “days” rather than “working” days) in a contract’s completion timing led to a dispute (Eminence Property Developments Ltd v Kevin Heaney [2010] EWCA Civ 1168) as to whether it had been repudiated properly and thus terminated validly.

EDI Central Ltd v National Car Parks Ltd: All Reasonable Endeavours and Utmost Good Faith

In EDI Central Ltd v National Car Parks Ltd [2010] CSOH 141, Lord Glennie found that EDI Central Ltd had not breached a contractual obligation to pursue, “with all reasonable endeavours and as would be expected of a normal prudent commercial developer experienced in developments of that nature”, the development of an NCP car park. In so finding, Lord Glennie, discussed the differences between “all reasonable endeavours”, “reasonable endeavours” and “best endeavours”.

Rooney v CSE Bournemouth Ltd: “Terms and Conditions Available Upon Request”

In Rooney v CSE Bournemouth Ltd [2010] EWCA Civ 1364, the Court of Appeal of England and Wales has held that “terms and conditions available upon request” could be interpreted as incorporating a contractor’s standard terms.

Mediaprint Zeitungs- und Zeitschriftenverlag GmbH & Co KG v Österreich-Zeitungsverlag GmbH: Prize Promotions and Unfair Commercial Practices

The European Court of Justice inMediaprint Zeitungs- und Zeitschriftenverlag GmbH & Co KG v Österreich-Zeitungsverlag GmbHC-540/08has held that the possibility of participating in a prize competition, linked to the purchase of a newspaper, does not constitute an unfair commercial practice within the meaning of Article 5(2) of the Unfair Commercial Practices Directive (2005/29/EC), simply on the ground that that is what induced some of the consumers concerned to buy the newspaper in the first place.

ADVERTISING AND MARKETING

Lidl SNC v Vierzon Distribution SA: Comparative Advertising and Products Sold in Supermarkets

The fact that there are differences in the extent to which you might like to eat certain food products depending on their place of production, the ingredients and who produced them, does not, the European Court of Justice has said in Lidl SNC v Vierzon Distribution SA C-159/09, preclude the possibility that an advertisement comparing such products (by reference to price alone, as opposed by reference to any of their other attributes) will fall within the boundaries of permitted comparative advertising, provided the advertisement is not misleading.

ENTERTAINMENT AND MEDIA

Spiller v Joseph: Defamation and “Honest Comment”

The Supreme Court of England and Wales in Spiller v Joseph [2010] UKSC 53 (1 December 2010) has declined to alter radically the defence of „fair comment“ in libel claims. However, Lord Phillips renamed the defence “honest comment” and amended it to reduce slightly the burden on claimants when identifying on which facts the comment is based.

JIH v News Group Newspapers Ltd: Privacy, Interim Injunction, Open Justice and Refusal to Grant Anonymity

In JIH v News Group Newspapers Ltd [2010] EWHC 2818 (QB), the High Court of England and Wales refused to continue an anonymity order, despite the parties having agreed thereto, but agreed to continue an order to withhold all information concerning the subject matter of the case.

DATA PROTECTION

ICO Imposes First Financial Penalties for Serious Data Protection Breaches

The Information Commissioner’s Office (ICO) has imposed its first financial penalties for serious data protection breaches under Section 55A of the Data Protection Act 1998. Stopping well short of the maximum that the ICO can impose, the penalties—£100,000 on Hertfordshire County Council for two separate incidents involving highly sensitive information faxed to the wrong recipients and £60,000 on employment services company A4e Ltd after it lost an unencrypted laptop containing sensitive personal data—are nevertheless substantial and a clear warning to data controllers in all sectors against insufficient data security controls and internal procedures.