European IP Bulletin, Issue 1

Overview


HOT TOPICS

1. The Right to Privacy in the Context of CCTV Surveillance- Peck v The United Kingdom (ECtHR, Application No.44647/98 of 28 January, 2003) [The European Court of Human Rights (ECHR)]

The unauthorised disclosure of CCTV footage by a public authority may constitute a violation of an individual’s right to privacy under Article 8 of the European Convention on Human Rights.

2. UK Courts Allow Service Out of Jurisdiction in Douglas v Hello! [2003] EWCA Civ 139

This case raises interesting issues about whether acts committed in a foreign jurisdiction can give rise to liability in England under the doctrine of joint tortfeasance. Long arm jurisdiction was established and permission was granted by the Court of Appeal to join a photographer who was alleged to have breached confidence and statutory duty under data protection legislation. The allegation that transmitting a photograph over telephone lines was held to be an actionable breach of data protection legislation.

3. European Commission Proposes the Establishment of a European Network and Information Security Agency

4. Vitamins Cartel – Fines Imposed by EC Commission

The Commission decision of 21 November 2001 concerns the infringement of Article 81(1) of the EC Treaty (Article 85 of the Treaty of Rome) and Article 53 of the EEA Agreement due to unlawful concerted practices of 13 different producers of 12 types of vitamins across Europe and the Far East. The cartel operation centred on the preparation and implementation of an annual “budget” to stabilise the world market share for each producer, compensation arrangements, target and minimum prices and meeting structures. Fines were reduced (in one case by 100%) for those who co-operated with the EC Commission.

5. Can GM Crops Be Commercially Grown

There is considerable debate within the EU as to whether genetically modified (GM) crops can be grown, or whether they will be banned forever. On the horizon for 2003 are two important steps that will precede any announcement from the British government on whether it will allow the commercial cultivation of GM in the UK. First is the publication of the first set of the results from the Farm Scale Evaluations (FSEs). Second is the public debate on broader issues surrounding GM technology.

6. “Equitable Remuneration” Under the Rental and Lending Rights Directive (92/100/EC)

Where a broadcast includes a performance embodied in commercial phonogram, Article 8(2) of the EU Directive on Rental and Lending Rights (92/100/EEC) requires a single ‘equitable remuneration’ to be paid for the use by the broadcaster, to be shared between phonogram producer and artists. The highest Court of Appeal of the Netherlands referred Stichting ter Exploitatie van Naburige Rechten [SENA] v Nederlandse Omroep Stichting [NOS] to the ECJ under Article 234 EC for a preliminary ruling on the interpretation of the undefined term ‘equitable remuneration’. The ECJ held that this term falls to be interpreted by national courts.

7. EC Proposes Harmonising IP Directive to Fight Piracy and Counterfeiting

The European Commission has presented a proposal for a Directive on the enforcement of intellectual property rights. The proposed Directive is intended to harmonise national laws on the means of enforcing intellectual property rights, and to establish a general framework for the exchange of information between responsible national authorities. It is particularly aimed at reducing counterfeiting and piracy by reducing differences in member states’ legislation concerning the enforcement of intellectual property rights, reinforcing measures against offenders, and acting as a deterrent to those engaged in counterfeiting and piracy.


COPYRIGHT

8. ‘Young at Heart’ Copyright Claim Upheld

The Court of Appeal in Beckingham v Hodgens, Court of Appeal, 19 February 2003 upheld a successful claim by session violinist ‘Bobby Valentino’ to be joint author of the song ‘Young at Heart’, performed and recorded by the Bluebells in 1984. The case looked at joint authorship and estoppel.

9. Sony Music Entertainment (UK) Limited v. Easyinternetcafe Limited [2003] EWHC 62 (Ch) 28 January 2003, Chancery Division

The CD copying service offered by Easyinternetcafe Limited, an Easyjet affiliated Internet café company, assisted infringement of copyright under section 17(1) and section 18(1) of the Copyright Designs and Patents Act 1988 (CDPA 1988). The judgment also considered a defence under section 70 CDPA (time shifting).

10. Norwegian Copy Protection Case – Circumvention of Copy Protection Devices Held Not Criminally Unlawful

On January 9 2003, a Norwegian Criminal Court acquitted John Lech Johansen of charges under the Norwegian Criminal Code relating to circumventing technical control measures that protect data, after he had succeeded in circumventing a copy protection system employed by the motion picture industry to protect DVD’s.

11. IFPI Address Copyright Infringement

The International Federation for the Phonographic Industry (IFPI) has published a Copyright Use and Security Guide for business and government. Addressing the problem of copyright theft in the corporate and government environment, the publication proposes certain best practice and policy considerations.

12. Lego Co v Coko Toy Co. – Industrial Copyright Decision in the People’s Republic of China

The Lego Co., the Danish toy manufacturer, won a copyright infringement proceeding on applied art (or industrial design) initiated in 1999 in the China High People’s Court whereby the defendant, Coko Toy Co., a Chinese company, was held liable for the unauthorised use of 33 out of 50 copyright elements owned by Lego Co., though with slight modification. The Defendant was ordered to destroy the relevant moulding equipment, to print a formal apology and to pay compensation.

13. Finnish Update on Copyright Issues

Three issues are reported, unauthorised sub-titles for films, the rejection of proposed of domestic legislation relating to copyright infringement based on the EC Copyright Directive (2001/29/EC) and a law governing ISP’s on the internet.


PATENTS

14. Case Comment on C-131/01 Commission v Italy [2002] Place of Establishment for Patent Agents Practising in Italy

Italian legislation states that to provide services before the Italian Patent Office, patent agents established in other Member States must be enrolled on the register of patent agents and have a residence or place of business in Italy. Patent agents are required to pass a professional aptitude test to be eligible for entry onto the register. This was held unlawful by the ECJ.

15. Appeal Dismissed in the Stena v Irish Ferries Case [2003] EWCA (Civ) 66

Ships (and aircraft) registered in other countries of the World Trade Organisation or Paris Union on industrial property may visit British territorial waters without fear of infringing local patents (section 60(5)(d) of the Patents Act 1977).

16. General Electric Co. v Enercon GmbH Ch.D Patents Court (Laddie J) 17/2/2003 [Unreported]

This case concerned an application for a stay of infringement proceedings pending conclusion of EPO opposition proceedings. The judge set out some helpful comments on some factors which would be taken into account in considering whether to order a stay, including whether an injunction would ever be ordered to stop on-going projects.

17. Teva Pharmaceutical Industries Ltd v (1) Istituto Gentili SpA (2) Merck & Co Inc [2003] EWHC 5 (Pat)

Patent found invalid, but with judicial “regret”. The failure of a patent to accurately describe the state of the prior art made it particularly susceptible to an attack of obviousness, since there was then little evidence of improvement over the prior art.

18. Agreement on Community Patent

Since 1999 the EU has been debating the regulations to bring a community patent into effect, and thus cut costs. The last road blocks have now been removed. It is now likely that the first community patents will be granted soon, as the EPO is the granting authority, and provided all member states of the EU are designated, it should be possible to covert on grant a European Patent to a Community Patent. Enforcement will be through national courts until 2010. It was this last issue which formed the final major bottleneck.

19. Implementation of the Biotech Directive: Commission Applies Pressure on Member States and Establishes Expert Group

20. SKB Plc & Anor v Apotex & 2 Ors Ch.D Patent Court, Laddie J, 4/2/2003 [Unreported]

Should experiments on samples provided in a patent action be subject to confidentiality undertakings, and if so to what extent.

21. Smithkline Beecham Plc (2) Glaxosmithkline UK Ltd v (1) Apotex Europe Ltd (2) Neolab Ltd (3) Waymade Healthcare Plc [2003] EWCA CIV. 137

This case deals with the dynamics of granting or refusing interim injunctions in the pharmaceutical field, where there has been a recent history of granting interim injunctions because price depression would be irrecoverable by a final injunction and an award of damages. The patent in question was only partly valid, and the issues arising out of that finding (in other proceedings) were also discussed.


TRADE MARKS

22. High Court Applies ECJ Repackaging Rules

In Glaxo Group Ltd. and The Welcome Foundation Ltd. v Dowelhurst Ltd. [2003] EWHC 110(Ch), Laddie J applied the preliminary ruling of the ECJ (Case C-143/00, [2003] Ch 27, [2002] ETMR 78) on the repackaging issues raised by this case. The judge discussed the conditions on which the re-packager can use the originator’s trade marks on repacked pharmaceuticals. Such use must be proportionate to the need to achieve market penetration, and must not lead to brand association.

23. Summary Judgment Refused in Repackaging Case Glaxo Group Ltd & The Welcome Foundation Ltd v Europharm of Worthing Ltd & Eurochem Ltd [2003] EWHC 116 (Ch)

Following the Glaxo v Dowelhurst case (above, “Dowelhurst“), the defendants applied for summary judgment under CPR rule 24.2. The defendants argued that, because the claimants had lost on the necessity to repackage issue in Dowelhurst, they had no reasonable prospect of success here and there was no compelling reason for the case to be tried. Laddie J in the High Court disagreed. The necessity for repacking will be examined on a case by case basis. The judge made some comments on the procedure adopted by the defendant in its application.

24. Court of Appeal Dismisses Appeal and Cross Appeal in the Registered Trade Mark Case of West (trading as Eastenders) v Fuller Smith & Turner plc [2003] EWHC Civ 48; 2003 WL 116973

The Court of Appeal dismissed the appeal and cross appeal by the parties and affirmed the earlier decision in David West (t/a Eastenders) v Fuller Smith & Turner PLC, [2002] EWHC 122; [2002] FSR 55; 2002 WL 346991 (Ch D), which dismissed West’s challenge to the validity of Fuller’s trade mark ESB (holding it was not devoid of distinctive character) and ordered a partial revocation of the mark in respect of all goods except bitter beers, the latter being the only goods for which the mark had been used. This case has a bearing on partial revocation for non-use, and its effect.

25. A New-look Community Trade Mark System?

The European Commission has recently presented a proposal for a Regulation which aims to modify existing procedures for the granting of Community Trade Marks (CTMs) by the Office for Harmonisation in the Internal Market (OHIM). The Regulation would abolish the system of searches, amend the regime for professional representation before the OHIM and expand the current system to include means by which the Boards of Appeal can further improve the way they function. The proposal also includes the abolition of the nationality and reciprocity conditions for allowing an application of a CTM thereby removing the nationality and residential restrictions on access to the system.

26. Spain’s Cidesport Loses to Nike in Chinese Trade Mark Case

A trade mark is unfringed where it is applied, even if all of the goods are for export to a country where the impersonation of the goods bearing the mark is not an infringement. The trademark NIKE is split, with different owners in Spain and China, the owner of the latter being the well-known US company. It succeeded in obtaining an injunction to prevent the Chinese manufacturer applying the NIKE trade mark in China for goods destined for the Spanish market.

27. Bud Trade Mark Battle Ends in Stalemate Budejovicky Budvar Narodni Podnik v Anheuser Busch Inc. [2002] EWCA Civ 1534

This case concerns the BUD trade mark, which was split between Czech and US owner, neither of whom was able to oust the other. The judgment deals with what constitutes genuine use of a trade mark, for the purpose of revocation for non use.


ACKNOWLEDGEMENTS

McDermott, Will & Emery would like to acknowledge the invaluable contribution to this Bulletin made by the following individuals at Queen Mary Intellectual Property Research Institute:

Andrew Bennett, Abigail A. Browne, John Cahir, Alan Cunningham, Professor, Mike Dowler, Alison Firth, Alexandra George, Celeste Hanley, Afe Komolafe, Malcolm Langley, Chris Lee, Florian Leverve, Judy McCullagh, Jane Molyneaux, Aditya Nagarsheth, Chiew Geik Ooi, Prabhuram Otharam,Barbara Shao-I Chen, Ilanah Simon, Matthew Smith and Jon Bing of the EFF for his translation of the Norwegian.