European IP Bulletin, Issue 80

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Overview


PATENTS

Pilot Drilling Control Ltd v Smith International Inc: UKIPO Refuses Request for Confidentiality

In Pilot Drilling Control Ltd v Smith International Inc BL O/046/11, the UK Intellectual Property Office (UKIPO) has refused a request for confidentiality in respect of proceedings regarding the ownership of a patent. There was not a real risk of harm from disclosure, whether in the form of direct commercial damage or by inhibiting a party from putting forward their best case.

Does “Reconditioning” Amount to “Making” The Product? Schütz (UK) Ltd v Werit (UK) Ltd

The Court of Appeal of England and Wales has ruled upon whether “reconditioning” amounts to “making” the product within the meaning of Section 60(1) of the Patents Act 1977.

TRADE MARKS

Non-UK Website Infringement of UK Trade Marks

In Yell Ltd v Louis Giboin [2011] EWPCC 9 the Patents County Court found that use of the word mark TRANSPORT YELLOW PAGES and the “walking fingers” logo on a non-UK website infringed Yell Ltd’s well-known registered trade marks in the United Kingdom.

CJEU Extends Injunction Granted in One Jurisdiction to All of The European Union

In relation to DHL Express France SAS v Chronopost SA, C-235/09, the Court of Justice of the European Union has held that an injunction granted by a Community Trade Mark (CTM) court under the CTM Regulation (40/94/EEC, now replaced by 207/2009/EC) in one EU Member State has effect, in principle, throughout the European Union.

Seemingly No Statute of Limitations in Bringing Complaints Under UDRP

Under the Uniform Domain Name Dispute Resolution Policy and Rules (UDRP), Sportingbet successfully gained control of a domain name corresponding to its trade marks. This was despite the domain name being registered almost 10 years ago, and despite it being four years since Sportingbet registered its relevant Trade Marks

COPYRIGHT

The Legality of Ordering ISPs to Install Filtering and Blocking Systems to Protect IP Rights

In Scarlet Extended SA v Société Belge des Auteurs Compositeurs et Editeurs C-70/10, the Advocate General (AG) of the Court of Justice of the European Union has given his opinion on whether it is lawful for a national court to impose an order on an internet service provider to make in impossible for its customers to send or receive, by means of peer-to-peer software, particular music files. The AG was of the opinion that any such order would infringe the Charter of Fundamental Rights, unless it was adopted on a national legal basis and was accessible, clear and predictable.

CONFIDENTIALITY

England and Wales Court of Appeal Rules on Scope of Liability for Unknowing Use of Confidential Information

Ruling on appeals and cross-appeals in Vestergaard Frandsen S/A v Bestnet Europe Ltd [2011] EWCA Civ 424, a dispute concerning alleged misuse of confidential information in the manufacture of mosquito nets, the Court of Appeal of England and Wales has found that one of the individual Defendants was not in breach of confidence because she had not actually used the information herself, although she had been closely involved in the commercial side of developing the net.

IP LITIGATION

High Court of England and Wales considers basis for transferring case to Patents County Court

In Caljan Rite-Hite Ltd v Sovex Ltd [2011] EWHC 669 (Ch) Mr Justice Kitchin has given a useful judgment on the requirements for transfer of a case from the High Court of England and Wales to the Patents County Court (PCC) under the PCC’s new procedural rules.

DATA PROTECTION

ICO Tells Businesses Their Employees Need to Take Responsibility for Personal Data

The Information Commissioner’s Office (ICO) has told businesses that their employees need “to take responsibility and ownership of tasks that involve handling personal data,” and that employers should also take responsibility for their employee’s awareness of the risks associated with handling personal data.

COMMERCIAL

MEPs Provisionally Approve the European Commission’s “28th Regime” Optional Contract Law System

Momentum is gathering in favour of an optional contract law, a “28thregime”, for the European Union. It would be an alternative to the current European contract law system, used primarily in relation to distance transactions, including e-commerce transactions. The European Parliament’s Legal Affairs Committee approved plans to draw up model contracts and gave its backing in principle to an EU contract law system.

ADVERTISING AND MARKETING

CAP and BCAP Publish New Guidance on The Use of Production Techniques in Cosmetics Advertising

A new Help Note was published on 4 April 2011 by the UK bodies that write the Advertising Codes—the Committee of Advertising Practice (CAP) and the Broadcast Committee of Advertising Practice (BCAP)—to provide greater clarification on the use of pre- and post-production techniques in cosmetic adverts.