European IP Bulletin, Issue 21

Overview


Hot Topics

1. New WIPO Information Tool on UDRP Designs

On 23 March 2005, the World Intellectual Property Organisation announced that its Arbitration and Mediation Center has created and made available a new information tool providing an overview of trends in decisions taken under the Uniform Domain Name Dispute Resolution Policy.

2. Annual Enforcement Report Released

On 31 March 2005, the UK Patent Office released its 2004 IP Crime Strategy Annual Enforcement Report.

Copyright

3. Google in AFP Copyright Dispute

The French news agency AFP has sued Google for including links to AFP’s story leads, headlines and graphics on the “Google News” site without permission. Google are now in the process of removing all AFP content from Google News.

4. Russian MP3 Site ‘Legal’

A Russian website accused of dealing in unauthorised digital copies of recorded music will not face the courts, as Russian copyright law does not cover digital files.

5. BPI Victory Against File Sharers

The British Phonographic Industry has recorded a fresh victory against illegal music downloads with its recent conclusion of 23 settlements. This and other similar initiatives have been pursued to deter file sharers as well as encourage the use of legitimate forms of music distribution over the Internet.

Patents

6. EU Ministers Endorse Proposal For a Directive on Computer-Implemented Inventions

On 7 March 2005, EU ministers endorsed the proposal for a Computer- Implemented Inventions Directive. The adoption of the draft Directive was highly controversial, especially after the EU Commission rejected requests from European MPs to amend it. In his statement to the European Parliament, the European Commissioner for Internal Market and Services remarked that any substantial change to the proposal should now be agreed during the second reading of the text.

7. Best Before’ Entitlement to Patents

The Court of Appeal recently delivered a decision on entitlement to patents or parts of patents, that is, the right to apply for a patent. Within the specific context of employees’ inventions, the extent to which one can have a claim of entitlement to someone else’s patent was considered.

Trademarks

8. O2 Holdings V Hutchinson 3G

The High Court declined to refer a number of questions raised by the Claimant to the European Court of Justice.

9. Gillette: Spare Parts and the Consumer Trade Mark

The issue of whether disposable razors are made up of spare parts resulted in the clearest confirmation yet of the role of trade mark law in consumer protection. In a system of undistorted competition benefiting the consumer, trade mark owners must look to their consumers to justify protecting the integrity of their marks. This extends protection beyond the classic test of confusion but the level of protection is likely to vary from industry to industry, with greater uncertainty for the owner.

10. L’0real V OHIM

On 16 March 2005, the Court of First Instance delivered its judgment in L’Oreal SA v OHIM (Case T-112/03). The Court dismissed an appeal against the Fourth Board of Appeal’s decision in L’Oreal’s FLEXI AIR application. The Court held that the Board of Appeal was entitled to adopt a decision that rejected the request for proof of genuine use. It re-affirmed that the word signs FLEX and FLEXI AIR were similar at visual, phonetic and conceptual levels and stated that national laws of Member States governing likelihood of confusion between a trade mark applied for and an earlier national mark were fully harmonised.

11. Shark’ Is Not ‘HAI’: Trade Mark Registration for Linguistic Equivalents

The Court of First Instance ruled that an earlier trade mark registration does not per se operate as a bar for refusal of subsequent application for trade mark registration or its linguistic equivalent. The conceptual similarity between marks arising from the same meaning could be ignored if, on global assessment of aural, visual and conceptual features, the translated word does not create any likelihood of confusion in the mind of relevant public. This test is more easily satisfied in cases where the relevant public could see and pronounce the names of the marks at the time of purchasing the branded products.

12. Nike Wins Spanish Trade Mark Battle

After litigation lasting ten years, the Civil Division of the Spanish Supreme Court has ruled in favour of Nike against Cidesport, the former proprietors of a Spanish trade mark consisting of the word NIKE and a depiction of the goddess Samothracia.


Acknowledgements

McDermott, Will & Emery would like to acknowledge the invaluable contribution to the Bulletin made by Professor Michael Blakeney, Claudio Chiarolla, Jerry Hsiao, Afe Komolafe, Malcolm Langley, Florian Leverve, Tina Loverdou, Maria Mercedes, James Mitchiner, Marisella Ouma, Rajesh Sagar, Ilanah Simon, Pekka Valo and Daphne Zografos from the Queen Mary Intellectual Property Research Institute, University of London.