European IP Bulletin, Issue 18

Overview


Hot Topics

1. The ECJ Interprets the Database Sui Generis Right

The ECJ handed down its first decisions interpreting the sui generis database right as provided in the Database Directive 1996/9/EC. The decisions provide important clarification of the law, specifically, the definition of database, the scope of the sui generis right and the test for infringement.

Copyright

2. IIPA Recommends That Poland Remains on Special 301 Watch List

In November, the International Intellectual Property Alliance (IIPA) responded to the Section 301 Committee’s request for comments regarding Poland’s review in the 2004 Special 301 process which recommended that Poland remain on the Special 301 Watch List. IIPA stressed the need for Poland to properly implement the new Optical Disc decree and improve enforcement against hard goods piracy and internet piracy.

3. Belgium, Finland and Sweden Fail to Implement Copyright Directive

At the beginning of 2004 the Commission referred eight Member States to the European Court of Justice for non-communication of the national implementing measures regarding the 2001 Copyright Directive (2001/29/EU). The Court has now given the first three decisions against Belgium, Finland and Sweden. Six more cases are pending.

Patents

4. EU Software Patents Directive Hangs in Balance After Poland Withdraws Support

The Polish government announced that it would not support the current draft directive on software patents rendering uncertain the directive’s future.

5. A Proposal On Leave To Leave To Perform Certain Experiments In Patent Litigation

The Court of Appeal commented on the design of experiments aimed at supporting an obviousness attack. The Court criticised the approach taken and made recommendations for the future control over experiments which could have a significant effect over the management of future litigation.

6. Human Rights and Patents ITP V Coflexip Stena Offshore

This decision of the First Division, Inner House, Court of Session of Scotland has shed light on the relationship between human rights and patents. In doing so the Court had held that the European Convention on Human Rights cannot trump the decision of the Board of Appeal under the European Patent Convention even though the same is alleged to have been given in violation of the human rights of a patent holder.

Trade Marks

7. Peak Holding AB V Axilon-Elinor AB

The case deals with the interpretation of Article 7(1) of the First Council Directive 89/104/EEC of 21 December 1988, specifically the exhaustion of rights conferred by a trade mark within the European Economic Area (EEA) in circumstances whereby the goods are offered for sale within the EEA and later withdrawn.

8. Lowden v Lowden Guitar Co Ltd

On 17 November 2004, the Chancery Division of the High Court of Justice delivered a judgment in Lowden v Lowden Guitar Company Limited, an appeal against a trade mark revocation decision of the Registrar.

9. Denial of Domain Name Transfer: BAA Loses Request For gatwick.com

WIPO Panel reached a decision on the issue raised by BAA against Mr Larkin, owner of the disputed domain name gatwick.com. The dismissal of this claim represents a review of the registration of geographical names, as well as leaving room for discussion of “reverse domain name hijacking” and passing off.

10. Anheuser-Busch v Budejovicky Budvar

The case concerns the conflict between a registered trade mark and an unregistered trade name. Under certain conditions, a trade name may be used in spite of being identical with a registered trade mark, and be regarded as a prior right in spite of being unregistered.

11. Distinctiveness in Registering 3d ctm: Frischpack v Ohim

The case concerns the conflict between a registered trade mark and an unregistered trade name. Under certain conditions, a trade name may be used in spite of being identical with a registered trade mark, and be regarded as a prior right in spite of being unregistered.


Acknowledgements

McDermott, Will & Emery would like to acknowledge the invaluable contribution to the Bulletin made by Professor Michael Blakeney (Supervisor), Estelle Derclaye, Jerry Hsiao, Afe Komolafe, Malcolm Langley (Coordinator), Tina Loverdou, Maria Mercedes, James Mitchiner, Lois Muraguri, Marisella Ouma, Rajesh Sagar, Pekka Valo and Daphne Zografos from the Queen Mary Intellectual Property Research Institute, University of London.