European IP Bulletin, Issue 17


Hot Topics

1. The House of Lords Wakes Up: Kirin Amgen v Hoechst

The House of Lords has given a detailed explanation of the relationship between the European Patent Convention and national laws and the applicability of the doctrine of equivalents, as well as product-by-process claims.

2. Sabaf SpA v MFI: Ascertaining Inventiveness in case of Aggregation of Inventions

The House of Lords laid down the test to be followed for ascertaining the inventive step, in case of an aggregation or juxtaposition of inventions within a single patent. It was also held that the seller of goods situated outside UK, who sells goods to a party in UK and makes arrangements for its importation to UK, cannot be held to be liable as an importer for infringement of the patent.


3. First Victory in Unprecedented Legal Battle Against Music Files Uploaders in the UK

The British Phonographic Industry Limited has been granted a court order forcing internet service providers to disclose the names and addresses of 28 music files-swappers, in an unprecedented case in the UK. This represents the commencement of a litigation programme against the major uploaders of music files in this country.

4. Moscow Court Dismisses Copyright Lawsuit Filed by Authors Opposing Free Online Library

This judgment in favour of the digital library once again highlights the issue of the liability of online service providers for the publication of digital copyright works. The defendants were hosts and were found not to be liable for the actions of the online libraries. The authors should have filed the suit against the author of the digital library.

5. “Who Wants to Be a Millionaire” – Vulnerable to Plagiarism?

The issue in this case is whether the format of the television show “Who Wants To Be A Millionaire?” infringes the copyright in pre-existing works by three individuals. The High Court’s ruling, dismissing two applications for summary judgment issued by the show’s producers, effectively paves the way for two of the writers to challenge the show’s format by seeking to prove copyright infringement in their own works.

6. S.A.. EMI Music France v Association CLCV

On 30 September 2004, the Court of Appeal of Versailles confirmed an earlier decision of the Court of Nanterre which found that EMI Music France had to inform consumers, by means of labelling, that there could be limitations to their ability to listen to CDs or make copies of them.


7. Celltech v Medimmune: Interpreting Jurisdiction Clause in IP Licencing Agreements

The present Court of Appeal judgment is relevant to the interpretation of jurisdiction clauses incorporated into intellectual property licensing agreements. It demonstrates that the courts will interpret jurisdiction clauses broadly with reference to the commercial objectives of the parties.

8. Pharmacia Italia v German Patent Office: Better Treating People Before Animals

This judgment addressed the way the duration of a Supplementary Protection Certificate is to be calculated within the Community. More specifically, the meaning of the term ‘medicinal product’ in determining the first marketing authorisation was debated. The question was whether ‘medicinal product’ referred only to human use or whether veterinary purpose was also included.

Trade Marks

9. KWS Saat v OHIM

This case considered the registration of a single colour as a trade mark.

10. Distinctive Character: Absolute Ground of Refusal for Advertising Slogans as Community Trade Mark? ECJ in OHIM v Erpo Möbelwerk

The Court of Justice held that the OHIM Third Board of Appeal applied incorrect criteria in its judgment regarding distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94, namely the absence of an additional element of imagination or an additional element of originality.

11. ECJ Sheds Light on Shape Trade Marks

In Mag Instrument Inc v OHIM, the European Court of Justice has provided more precise guidance on the requirements shape marks must meet in order to be registered as trade marks.


McDermott, Will & Emery would like to acknowledge the invaluable contribution to the Bulletin made by Professor Michael Blakeney (Supervisor), Sofia Casimiro, Jerry Hsiao, Afe Komolafe, Malcolm Langley (Coordinator), Florian Leverve, Tina Loverdou, Marisella Ouma, Rajesh Sagar, Ilanah Simon and Daphne Zografos from the Queen Mary Intellectual Property Research Institute, University of London.