European IP Bulletin, Issue 42

Overview


In Depth

Trade Secrets & Confidential Information

PennWell Publishing v Isles: Who owns the contact list—employer or employee?
In the case of PennWell Publishing (UK) Limited v Isles and others [2007] ALL ER (D) 180, the Court held that an address list contained in any e-mail system, compiled by an employee, belongs to the employer. Andrew Sharples, a European Patent Attorney in the London office of McDermott Will & Emery, outlines the decision.

Copyright & Design

Imported flashing novelty badges found to infringe
Unauthorised copies of badges produced by the Claimant were reproduced and imported from China by the Defendant. The Defendant rejected the allegation of copyright infringement on the basis of s. 51(1) of the Copyright Designs and Patents Act.

Patents

Are gaming systems patentable subject matter?
The recent case of IGT v The Comptroller General of Patents [2007] EWHC 1341 (Pat) concerns an appeal against a decision of the Comptroller-General of Patents who refused collectively four patent applications relating to gaming systems. Applying the Aerotel four-step test, the patents were excluded from patentability as they fell within the excluded subject matter and were devoid of any technical contribution.

Can foreign and international laws affect domestic patent cases?
Pozzoli Spa v BDMO SA and Moulage Industriel de Perseigne SA [2007] EWCA Civ 588 led to an interesting decision that raises the possibility of invoking international agreements, such as the WTO-TRIPS Agreement, to manage domestic court procedure. Pozzoli appealed against a decision of the Chancery Division and claimed that, because of the relevant provisions in Article 32, TRIPS Agreement, an appeal should be granted with a full judicial hearing on the merits of the case. The appeal was granted on other grounds, but the trial judge’s findings of obviousness and non-infringement remain untouched.

Trade Marks

Limonchelo v Limoncello: A sour taste for Shaker
On 12 June 2007, the ECJ confirmed in OHIM v Shaker di L. Laudato & C. Sas [Case C-334/05], that the likelihood of confusion between a word mark and a complex word and figurative mark should be globally assessed, taking into account all the visual, phonetic and conceptual elements of the marks at issue.

Comparative advertisement and freedom of expression
In its recent decision in Boehringer Ingelheim Limited & Ors v Vetplus Limited [2007] EWCA Civ. 583, the Court of Appeal considered the overlap between trade mark infringement, comparative advertising and the right to freedom of expression.

Media & Competition

European Commission probes the anticompetitive nature of international collecting societies
The European Commission invited interested third parties to comment on the commitments proposed by the International Confederation of Societies of Authors and Composers and 18 European Economic Area collecting societies in response to the Commission’s Statement of Objections of January 2006. The Commission is concerned that certain clauses in the collecting societies’ agreements may contain anticompetitive elements.

Procedure

Allowing concurrent patent proceedings: when does business get a stay?
In Glaxo v Genentech [2007] EWHC 1416, the High Court has handed down judgment allowing proceedings in the English courts to proceed to trial in parallel with concurrent proceedings in the European Patent Office. This case distinguished the traditional rules of the English courts with respect to staying concurrent proceedings on the basis that the action concerned questions of patent validity.

Legal News

US Court of Appeals moves towards limiting ISP immunity
In Fair Housing Council of San Fernando Valley et al v Roommates.com, the US Court of Appeals for the 9th Circuit has ruled that an online letting service was not immune from potential liability for the profiles entered by the users of its services.