European IP Bulletin, Issue 8

Overview


COPYRIGHT

1. BELGIAN WATCHDOG SUES MAJOR RECORD LABELS OVER ANTI-COPY CDS

Belgian-based watchdog Test-Achats is suing some of the world’s largest record labels for selling copy-protected CDs that prevent consumers from playing the CDs on PCs and car stereos and from making legitimate back-up copies. It wants the record labels to stop releasing copy-protected CDs and to reimburse consumers.

2. DVD ‘PIRATE’ CLEARED BY NORWEGIAN COURT OF APPEAL

Jon Johansen, one of the creators of the program DeCSS, which allows DVDs to be played on PCs running the Linux operating system, was acquitted by the Norwegian Court of Appeal after being sued for piracy by the Motion Picture Association of America.

3. KAZAA: NOTHING ILLEGAL ABOUT IT!

The Dutch Supreme Court has ruled that Kazaa’s creator cannot be held liable for the use of its file sharing software. The ruling first by a highest court of any country implies that providers of peer to peer file sharing software cannot be held guilty of piracy and copyright infringement of music, films and other material that is transmitted using their software. It may now leave the beleaguered music industry to haunt the individual users in its efforts to quell piracy.

4. UNREGISTERED DESIGN RIGHTS

Two recent cases, Intercase v Time Computers and Ultraframe v Fielding have cast light on the ownership of UK unregistered design right, as between individuals and the companies they own or direct.

5. NEW ONLINE SYSTEM FOR DIGITAL SIGNATURES

JADE is a new online system of digital signatures that has been developed to assist in the process of copyright assignation for authors.

6. GRIGGS V EVANS

The issue in this case is to judge who the owner of a copyright is over a logo made by a freelance artist, contracted by an advertisement company to satisfy the request of a client that was trying to reinforce its ‘Dr Martens’ trade mark.


PATENTS

7. APOTEX EUROPE V SMITHKLINE BEECHAM

The determination of exact scope of monopoly conferred by any claim is a fundamental necessity to resolve questions of infringement, anticipation and obviousness. The subject matter of this case deals with the law applicable to construction and interpretation of claims as embodied in a patent specification.

8. OSTEOPOROSIS MEDICINAL PATENTS

Two recent cases, Instituto Gentili v Teva and Merck v Generics, relate to the same type of medicine to treat osteoporosis. In the first case, a patent was challenged on the grounds of novelty and fairness and in the second Merck brought an infringement action to protect its best-selling osteoporosis medicine.


TRADE MARKS

9. GEROLSTEINER BRUNNEN V PUTSCH

The case at issue refers to the interpretation of ‘honest practices’ where an undertakeing uses a trade mark that poses a likelihood of confusion with an earlier registered mark.

10. MICROSOFT ‘WINDOWS’: A GENERIC TERM OR VALID TRADE MARK?

Having failed to obtain a preliminary injunction in US, Microsoft challenged Lindows.com in the Benelux countries over infringement of its ‘Windows’ trade mark. The courts of Sweden and Finland have granted preliminary injunction in favour of Microsoft but the actions have exposed ‘Windows’, one of Microsoft’s most famous trade marks, to the threat of being declared a generic term. Such a declaration would mean that ‘Windows’ would lose its validity as a trade mark.

11. DIXY FRIED CHICKENS

A UK trade mark registration may be opposed or challenged by an earlier user who enjoys passing off rights over the mark. An attack may also be based upon a third party’s passing off rights. However, credible prima facie evidence of the rights must be adduced. In this case the applicant for revocation had not reached the evidential threshold. On the contrary, the judge described the evidence as a “shambles”, “voluminous”, “much of it irrelevant…, a lot of it inadequate and all in a disorganised state”.

12. AUDI AG V OHIM

The issue in this case is the dismissal by the European Union’s Court of First Instance (CFI), of an appeal from a decision made by the European trade mark office, OHIM, refusing to register a word mark ‘TDI’ used in the automobile industry as a Community trade mark for its lack of distinctiveness.

13. SHIELD MARK V KIST

A decision from the ECJ on whether sounds can be registered as trade marks. The ECJ considered: (i) whether sounds are capable of distinguishing the goods of one undertaking from those of other undertakings; and (ii) whether sounds are capable of being graphically represented. The ECJ also provided guidance on which sorts of representations of sounds meet the graphical representation requirement.


ACKNOWLEDGEMENTS

McDermott, Will & Emery would like to acknowledge the invaluable contribution to the Bulletin made by, Lucas Arrivillaga, Alison Firth, Afegieme Komolafe, Malcolm Langley, Florian Leverve, Rajesh Sagar, Ilanah Simon and Daphne Zografos, from the Queen Mary Intellectual Property Research Institute, University of London.