European IP Bulletin – Issue 70

Overview


In Depth

COMMERCIAL

MGB Printing and Design Ltd v Kall Kwik UK Ltd[2010] EWHC 624 (QB)

This case highlights that a franchisor may owe its franchisee a duty of care that exists separately from its contractual obligations under the franchise agreement. In such a situation, exclusion and limitation of liability clauses in respect of pre-contractual statements and discussions, designed to prevent claims in misrepresentation, will not be of use. Care must thus be taken by franchisors when advising any potential franchisee, before entering into agreements.

Handelsgesellschaft Heinrich Heine GmbH v Verbraucherzentrale Nordrhein-Westfalen eVC-511/08 (Unreported)

This case was referred to the European Court of Justice in relation to Articles 6(1) and (2) of the Distance Selling Directive (DSD) regarding reimbursement of delivery costs. The outcome of the reference was that the DSD obliges online retailers to refund the original cost of delivery to consumers who withdraw from the contract; the only permissible cost that retailers can pass on to consumers is the cost of returning the goods This is in line with the approach already adopted by the UK Office of Fair Trading.

TRADE MARKS AND PASSING OFF

Pavel Maslyukov v Diageo Distilling Ltd and Diageo Scotland Ltd[2010] EWHC 443 (Ch): Bad Faith and Residual Goodwill

Arnold J’s judgment in this case provides a useful assessment of residual goodwill. The key point is whether a positive step has been taken to abandon the goodwill. Each case will turn on its own facts, but what is more difficult to assess is what happens to the goodwill if trading ceases: no actual abandonment of the goodwill takes place, but no further use is made of the marks in question.

Weldebräu v The Office of Harmonization for the Internal Market[2010] T-24/08

The General Court of the European Union has upheld an appeal from the Fourth Board of Appeal of The Office of Harmonization for the Internal Market rejecting an opposition to an application to register the three-dimensional shape of a bottle as a Community trade mark, based on an earlier Community registration for a bottle shape in respect of identical and similar goods.

COUNTERFEITING AND PIRACY

Twentieth Century Fox Film Corporation v Newzbin Ltd[2010] EWHC 608 (Ch): Major Victory for Film Industry Against Online Piracy

Mr Justice Kitchin’s judgment in this case represents a major victory for the film industry against online piracy. The uncompromising judgment determined that a Usenet search service infringed film studios’ copyright when it provided the means by which its « premium members » could, with the click of a mouse, sweep the Usenet platform and retrieve binary component film files to reconstitute whole movies that could then be burned to DVD.

European Commission Review of EU legislation on Customs Enforcement of Intellectual Property Rights

Following its review of Council Regulation (EC) No 1383/2003 of 22 July 2003 (the Regulation) concerning customs action against goods suspected of infringing certain intellectual property rights and the measures to be taken against goods found to have infringed such rights, the European Commission has published a Consultation Paper entitled Review of EU Legislation on Customs Enforcement of Intellectual Property Rights. If, following the public consultation procedure, it is considered appropriate, the Commission will prepare a proposal to replace the Regulation.

PATENTS

Red Spider Technology v Omega Completions Technology [2010] EWHC 59 (Pat): Insufficiency, Obviousness, Anticipation and Design Right

Mr Justice Mann has held that a patent for a water injection valve was invalid for insufficiency, obviousness and anticipation. A further claim for design right infringement was also thrown out as Mann J held that Omega had used only the drawings from the patent, which pre-dated the design of Red Spider’s valve. The case highlights a number of pitfalls for the unwary inventor.

Les Laboratoires Servier v Apotex Inc[2010] EWCA Civ 279: Enforcement of Cross-Undertaking in Damages and Set-Off for Unlawful Manufacture

The Court of Appeal of England and Wales has reversed the decision of Mr Justice Norris in which he refused Servier permission to amend its pleadings post-trial to take account of a Canadian decision upholding the validity of a key patent and awarded Apotex millions of pounds in damages.

COMMUNICATIONS AND NEW MEDIA

Kaschke v Gray[2010] EWHC 690 (QB): Online Blogs and the Hosting Safe Harbour

This appeal raises important questions relating to Regulation 19 of the Electronic Commerce (EC Directive) Regulations 2002 (Section I 2002 No 2013). The judgment appears to accept the proposition that the operation of a chat room should fall within the definition of the provision of an information society service consisting of the storage of information, making it eligible for protection under the hosting safe harbour in Article 14 of the E-Commerce Directive (2000/31/EC).

ENTERTAINMENT AND MEDIA

The Digital Economy Act 2010

The UK Digital Economy Act 2010 (DEA) was enacted on 8 April 2010 as a result of the recommendations in the Digital Britain Report.

DOMAIN NAMES

New Powers to regulate Domain Name Registries

The Digital Economy Act 2010 (DEA) introduces new powers in relation to domain name registries to prevent potential abuses in light of the liberalisation by ICANN (the Internet Corporation for Assigned Names and Numbers) of the generic top-level domain (gTLD) market.