European IP Bulletin, Issue 11

Overview


INTELLECTUAL PROPERTY

1.EC Commission Rules Against Microsoft For Abuse Of Its Dominant Position

After a five-year investigation, the EC Commission has found that Microsoft has abused its dominant position in the market and thus violated Article 82 of the EU treaty.


COPYRIGHT

2.Ownership of Copyright in Research Partnerships: Cyprotex Discovery v University of Sheffield

Events in this case highlight the need for parties to clearly identify their respective capabilities, contributions and intentions in research agreements as well including clauses to deal with ownership of IP rights. at the earliest opportunity.

3.Director And Writer In Copyright Spotlight

The problems surrounding joint ownership of copyright are explored in light of Pam Brighton, the former director of the play “Stones in his Pocket”, claiming joint copyright ownership of the play from writer Marie Jones.

4.Protection Of Technical Drawings: Ultra Marketing v Universal components

The case determined that copyright protection in a drawing protected the artistic characteristics of the work and not the technical idea that it embodied. This meant that a competitor could use the drawing to inspire a progressive development without infringing design rights.


PATENTS

5.Once Bitten Not Twice Shy: Rockwater v Technip France

This interesting case involved a patent claim that was earlier litigated before the Court of Appeal in relation to its novelty, obviousness and claim construction. Yet, the patent was again challenged on similar grounds for its lack of novelty and being obvious by another party in light of further prior art being discovered.

6.Collateral Use Of Patent Evidence: Dendron v Regents Of University Of California

This case is the first authority in the European Union, which encapsulates the law in respect of the collateral use of evidence obtained by one of the parties pursuant to a letter of request made under EC regulation 1206/2001 and under Common Law. It further elaborates the considerations that the Court will weigh before allowing collateral use of such evidence in other proceedings between the same parties.

7.Russell Finex v Telsonic

The main issue in that case refers to the determination of the scope of a patent; more precisely it is the application of the Improver test which is specified. The Improver test is used to assist in the understanding of the construction of a claim by providing a method to define its purposive construction. This is especially useful in patent litigation when the supposedly infringing entity does not fall within the literal wording of a claim.


TRADE MARKS

8.Passing Off: McAlpine v McAlpine

The shared rights to goodwill of Sir Robert McAlpine and Alfred McAlpine in the name “McAlpine” could be damaged if one of them abandoned its distinguishing prefix and arrogated to itself the use of the name in circumstances where such an action amounts to a misrepresentation. This unusual case illustrates the flexibility of passing off rights compared with trade mark rights.

9.CTM Exclusive Right: Compass Publishing v Compass Logistics

The case at issue discusses the overlap between Community Trade Mark (CTM) and national trade mark. One of the objectives of the CTM Regulation is to protect the interests of owners of earlier rights whether they are registered or not.

10.Own Name Defence: IBM v Web-Sphere

The case at issue refers to the registration of a Community Trade Mark and an unregistered mark which came into existence after the CTM application had been filed but before it had been granted. The CTM Regulation provides that rights conferred by CTM registration prevail against third parties from the date of publication of the registration.

11.Distinctive Character: SAT.1 Satelliten Fernshehen v OHIM

This opinion of AG Jacob lays down the rules for interpretation of Art 7 (1)(b) of Community Trade Mark Regulation, in assessing registrability of a sign in relation to a particular services or goods. It further elaborates the policy consideration and the test to be followed in applying the said provision to a given set of facts.


ACKNOWLEDGEMENTS

McDermott, Will & Emery would like to acknowledge the invaluable contribution to the Bulletin made by Angel Adrian, Lucas Arrivillaga, Afegieme Komolafe, Malcolm Langley, Florian Leverve, Rajesh Sagar and Daphne Zografos from the Queen Mary Intellectual Property Research Institute, University of London.