European IP Bulletin, Issue 29

Overview


Hot Topics

1. Comparison: Divisional Patents in Europe and the United States

Decisions of the European Patent Office (EPO) Technical and Legal Boards of Appeal have demonstrated a clear desire by the EPO to distinguish the system of divisional applications under the European Patent Convention from the system of continuations and continuations-in-part that exist before the US Patent and Trade mark Office.

Copyright

2. Copyright on Papal Documents

The Secretary of State for the Vatican has recently decreed that the Vatican publishing house is entrusted with the right to enforce the Pope’s copyright worldwide. This supports the Vatican’s desire for better protection of the Pope’s writings against unauthorised use. Remuneration that could be derived from enforcement of the decree is another key aspect of the initiative.

3. Nova Productions v Mazooma Games: Copyright Infringement of Video Games

The High Court of Justice has given its judgment in two copyright infringement actions concerning coin operated video games. Both claims failed. The court analysed whether a substantial part of any copyright work had been reproduced.

4. The Performance (Moral Rights, etc.) Regulations 2006

The Performance (Moral Rights, etc.) Regulations 2006 came into force on 1 February 2006 to implement the UK government’s community obligation under EU law, pursuant to ratification of the World Intellectual Property Organization’s Phonograms and Performances Treaty 1996.

Patents

5. The EPO Clarifies the Concept of Diagnostic Methods

On 16 December 2005, the Enlarged Board of Appeal of the European Patent Office delivered an opinion concerning the interpretation of the concept of “diagnostic methods practised on the human or animal body” and the cases in which their patentability is excluded under the European Patent Convention.

6. Tamglass v Luoyang North Glass

In this case, Justice Mann held that a fax sent to a potential customer containing a list of infringing machines was an “offer to dispose” within the meaning of Section 60 of the Patents Act, 1977. The party sending such a fax was found to be guilty of infringement, and could not argue that it was merely an “invitation to treat”. Furthermore, the knowledge that the use of the machine would infringe the patent could be imputed on the guilty party either indirectly or by necessary inference.

Trademarks

7. Deutsche SiSi-Werke v Ohim

The German company SiSi-Werke has lost its latest battle to register a product shape as a trade mark across the EU.

8. Emanuel v Continental Shelf: Name of Fashion Designer as a TradeMark

The Advocate General (AG) gave his opinion as to whether the transfer of a trade mark, which is the name of a fashion designer, to other parties is deceiving or misleading to the customer. The AG found that the trade mark does not deceive the customer if the trade mark is assigned with the goodwill.

Media

9. George Galloway MP v The Telegraph Group

On 25 January 2006, the Court of Appeal delivered its judgment in George Galloway MP v The Telegraph Group. The Daily Telegraph did not succeed in its bid to overturn a 2004 ruling that it had libelled politician George Galloway. The Court of Appeal dismissed all three grounds put forward by the newspaper, namely, the defence of qualified privilege, the defence of fair or honest comment and the claim that the £150,000 damages originally awarded were excessive.

10. HRH The Prince of Wales v Associated Newspapers

The High Court in London has made a temporary order restraining the publication or disclosure of Prince Charles’ private journals pending the judgment on the summary judgment application or further order. Copies of the journals, which contained the Prince’s views on the 1997 handover of Hong Kong to the Chinese, had come into possession of the Mail on Sunday.

Technology

11. Microsoft Agrees to Licence Windows Source Code

Microsoft announced on 25 January 2006 that it would licence some of its secret software source code under the threat, from the European Union, of fines of up to $2.45 million a day. However, its rivals have said that it is merely a “ploy” as large amounts of source code will be useless.


Acknowledgements

McDermott Will & Emery would like to acknowledge the invaluable contribution to the Bulletin made by Professor Michael Blakeney, Angel Adrian, Sofia Casimiro, Claudio Chiarolla, Luca Escoffier, Jerry Hsiao, Afe Komolafe, Malcolm Langley, Tina Loverdou, Maria Mercedes Frabboni, James Mitchiner, Marisella Ouma, Rajesh Sagar, Ken Shao and Pekka Valo from the Queen Mary Intellectual Property Research Institute, University of London.