European IP Bulletin, Issue 2

Overview


HOT TOPICS

1. PRIVACY AND PERSONALITY, POLITICIANS AND STARS

An article by Rohan Massey and Kathrin Tauber

2. DATA PROTECTION – CALIFORNIA’S LONG ARM OF THE LAW GETS LONGER

An article by Rohan Massey

3. THE eEUROPE 2002 FINAL REPORT

Communication from the Commission to the Council, the European Parliament, the Economic and Social Committee and the Committee of the Regions.

4. AMENDMENTS TO THE PROPOSED EUROPEAN DIRECTIVE ON RE-USE & COMMERCIAL EXPLOITATION OF PUBLIC SECTOR INFORMATION

A number of amendments to the draft directive on re-use and commercial exploitation of public sector information (2002/0123(COD)) have been suggested by the European Parliament.

5. THE CIVIL PROCEDURE (AMENDMENT NO. 2) RULES 2002 (SI 2002/3219 (L.18))

An Amendment to the Civil Procedure Rules 1998 has come into force on the 1 April 2003 providing a new Part 63 that will govern the Court’s procedures related to intellectual property rights.

6. CREAM HOLDINGS LTD V BANERJEE & THE LIVERPOOL DAILY POST & ECHO [2003] EWCA CIV 103

This case centres on Section 12(3) of the Human Rights Act 1998, which provides that no relief is to be granted to restrain publication before trial unless the court is satisfied that the applicant is likely to establish that publication should not be allowed


COPYRIGHT

7. IFPI TURNS IT EYES TO ACADEMIA

The International Federation of the Phonographic Industry has released a Copyright Use and Security Guide for Academic Institutions as part of a two pronged copyright education campaign which saw business and government targeted last month.

8. REPRESENTATIVE ACTIONS – COMMON INTERESTS AND GRIEVANCES

In Independiente Ltd & Ors v Music Trading On-Line (Hk) Ltd, [2003] EWHC 470 (Ch), the Court held the claimants were entitled, as the owners or exclusive licensees of the UK copyright in various sound recordings, to bring an action for alleged breach of copyright in a representative capacity on behalf of all other members of the British Phonographic Industry Ltd and Phonographic Performance Ltd in relation to sound recordings which, although lawfully made and released on the market by the defendants outside the European Economic Area, had subsequently been supplied by them to buyers within the UK.


PATENTS

9. AMENDMENT: THE PATENTS ACT 1977 (ELECTRONIC COMMUNICATIONS) ORDER, 2003

The UK has amended the Patents Act, 1977 (“the Act”) by SI 2003 No. 512 made under the Electronic Communications Act, 2000 and Tribunals and Inquiries Act, 1992 with effect from 1st April, 2003.

10. SIGNIFICANCE OF DATE OF WITHDRAWAL OF PATENT APPLICATIONS

Haberman v Comptroller General of the Patent Office, [2003] EWHC 430 (Pat)

11. COFLEXIP SA AND COFLEXIP STENA OFFSHORE LTD V STOLT OFFSHORE MS LTD., [2003] EWCA CIV 296

On the 13 March 2003, the Court of Appeal (Chancery Division) held that Coflexip would be required to re-plead its claim for damages for economic loss that were associated with a previous successful patent infringement litigation.


TRADE MARKS

12. GOULBOURN V OHMI – REDCATS (SILK COCOON), T-174/01, ECJ

The CFI overruled the decision of the Board of Appeal annulling the Opposition Division’s earlier decision concerning the application to have ‘Silk Cocoon’ registered as a Community Trade Mark.

13. ANSUL BV V AJAX BRANDBEVEILIGING BV, C-40/01, ECJ

The ECJ held that “put to genuine use” within the meaning of Art.12(1) of the Trade Marks Directive (89/104/EEC) meant “actual use” of the mark and did not include “token use” of a mark merely to maintain the right to the mark.

14. CFI APPLIES GENERICITY TEST

In Alcon Inc. v OHIM, Dr Robert Winzer Pharma GmbH (BSS), T-237/01, ECJ (5 March 2003), the CFI applied the genericity test formulated by the ECJ in Merz & Krell [2001] C-517/99. Additionally, in considering whether the mark in question had acquired distinctiveness, the CFI looked for real evidence that the mark was now perceived as an indication of origin.

15. ECJ DEFINES IDENTICAL MARKS

In LTJ Diffusion SA v Sadas Vertbaudet SA (Case C-291/00, 20 March 2003), the ECJ responded to a French Article 234 reference calling for clarification of what is meant by an identical trade mark in Directive 89/104, which approximates the trade mark laws of the EU Member States. The restrictive definition given is relevant to registrability, infringement and invalidity under both Directive 89/104 and the Community Trade Mark Regulation.

16. THIRD PARTY LIABILITY UNDER INJUNCTIONS

The Court of Appeal held that where an injunction had been granted to prevent the defendant using the initials “WWF”, a third party licensee of intellectual property rights from the defendant was entitled to a suitable declaration to protect its position in relation to use of the initials which it was not practical to discontinue.

17. DAIMLERCHRYSTLER CORPORATION V OFFICE FOR HARMONISATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) (OHIM), T-128/01, CFI

The CFI annulled a decision of OHIM’s Second Board of Appeal refusing the registration of a figurative mark representing a vehicle grille as a Community trade mark on the grounds that the mark had insufficient distinctive character.


Acknowledgements

McDermott, Will & Emery would like to acknowledge the invaluable contribution to the 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 Sunethra Wimalasundera.