European IP Bulletin, Issue 3

Overview


HOT TOPICS 

1. The Directive on Privacy and Electronic Communications (2002/58/EC)

Clare Sellars of the London office provides an overview of the new legislation to be implemented by 31 October 2003 which will affect businesses using email or text messaging systems to market themselves to clients. The aim of the Directive is to harmonise the legal requirement of privacy protection in relation to the processing of personal data in electronic communications throughout the EU.

2. German Ministry of Justice Proposes Bill Reforming Act on Unfair Competition

Kathrin Tauber of the Munich office deals with the legal changes arising out of the proposed bill to modernise the current Act on Unfair Competition, especially the suggested modifications to the rules of sales promotion.

3. Third World Intellectual Property Day

Following a call of the Director General of the World Intellectual Property Organisation for society to be more involved in matters relating to intellectual property, the theme of this year’s Word Intellectual Property Day on 26 April 2003 was: “Making Intellectual Property Your Business”.

4. Royal Society report on the effect of intellectual property rights on research

The Royal Society report “Keeping science open: the effects of intellectual property policy on the conduct of science” has been published. It studied the effect of several intellectual property rights, i.e.patent, copyright, and database legislation and concluded that the current intellectual property system needs to be tightened up for the sake of both science and society.

5. How can the public sector provide people with information on, and build confidence in, the way it handles their personal details?

The Lord Chancellor’s Department has launched a consultation paper on personal information and the way the public sector is handling it. It is concerned with the understanding of the public as ‘customer’ of such service to a paper made by the Lord Chancellor’s Department. This paper aims at providing information to the public about why they should provide their personal data to the public sector, the protection of such data, and the legal safeguards.


COPYRIGHT & DESIGNS

6. Linux creator speaks out on Digital Rights Management

Although Digital Rights Management (DRM) is thought of as a means by which rights owners can control the authenticity of works and monitor their use and ensure payment for use is made, the creator of Linux, the open-source operating, system says that some DRM systems may be compatible with open source policies.

7. Breach of confidence, alternatively copyright infringement?

In Cray Valley Limited v Deltech Europe Ltd., John Scanlan & Cristopher Riley, [2003] EWHC 728, it was alleged that on the sale of a business where information was left behind on abandoned computers. The information did not have the necessary character of confidential information, however, an assignment of “all assets” was wide enough to cover the copyright works by which the information was recorded, and this copyright was infringed by the defendants’ downloading the information.

8. EasyInternet café settles over music rights

EasyInternet has paid £80,000 in damages (down from £1 million requested) and legal costs to the UK record industry in an out-of-court settlement for running unlicensed CD-burning of music downloads in its stores. The court held that EasyInternet was liable for its customers downloads and that the recording industry’s umbrella organisation, BPI, had title to sue.

9. Dutch court blocks Harry Potter-like books

A Dutch court has found in favour of J.K. Rowling, the author of the Harry Potter series and prohibited the distribution of 7000 copies of a book by Russian author Dimitry Yemets entitled “Tanya Grotter and the Magic Double Bass”. The court held that the defendant’s book was not a parody but an adaptation and thus infringed J.K. Rowling’s copyright.

10. Registered Community Designs come on stream as of 1 April 2003

The Office for Harmonisation in the Internal Market (Community Trade Marks and Designs Registry) has begun processing applications to register Community designs and has issued draft examining guidelines for consultation.

11. New German design law proposed

The council of German Federal ministers have approved and published a bill for the reform of German design law. Harmonisation of EU law will result in the lowering of thresholds for design registration in Germany and a shift from a copyright approach (albeit copying may be presumed if a design has been made available to the public) to full exclusive rights for registered designs. Examination as to certain substantive requirements will be introduced. A 12-month general grace period will be available. Protection will be available for a broader range of subject-matter.

12. UK amends Registered Designs Act to accommodate Registered Community Designs

The Registered Designs Regulations came into effect in 1 April 2003. The main change is to allow refusal or invalidation of a national registered design on the ground of a prior Community registration (Art 11 of the Design Directive 98/71/EC), with appropriate transitional provisions.


PATENTS

13. Rockwater win on infringement and invalidity

Rockwater Limited v Coflexip S.A. & Technip, [2003] EWHC 812 (Ch).

An action was brought by Rockwater before the Patent Court, Chancery Division, High Court of Justice for revocation of a European Patent. Rockwater succeeded on both grounds of infringement and invalidity. Claims 3 to 9 failed for anticipation from prior art, while claim 1 to 9 failed for obviousness. This patent had previously been found valid and infringed, so the second action succeeded in overturning the result of the first.

14. Obligation of farmers to provide information to Holders of Community Plant Variety Rights

Schulin v Saatgut-Treuhandverwaltungs GmbH, C-305/00, ECJ.

The ECJ in this case, while interpreting the sixth indent of Art. 14(3) of Council Regulation (EC) No. 2100/94 on Community Plant Variety Rights and Art. 8 of Commission Regulation (EC) No. 1768/95 implementing rules on agricultural exemption as provided in Art. 14(3), has held that the obligation of farmers to provide information to right holders only extends to those who have derogated from such rights under Art. 14 and not to all farmers as such. The right holders must demonstrate some indication that the farmer has used or would use their variety for any purposes stated in Art. 13(2) of the Council Regulation.

15. Refusal of Supplementary Protection Certificate to combination drugs

Takeda Chemical Industries Ltd v Comptroller General of the Patent Office, [2003] EWHC 649 (Pat).

The subject matter of this appeal pertains to the second ‘Swiss form’ patent, relating to Lansoprazole, which showed particular uses of prevention and treatment of certain diseases when taken with some antibiotics. Takeda was granted an amendment of product license to include the combination by the Medicines Control Agency (MCA). Takeda had sought SPC for this amended product license. The Patents Court dismissed the appeal, stating that the prerequisite of ‘basic patent’ under Art. 3(a) of the Regulation was not fulfilled as Takeda owned a patent only for Lansoprazole and other antibiotics in the combination could not be identified with the invention of Lansoprazole as such


TRADE MARKS

16. The Court of First Instance dismiss the appeal over the ‘NU-TRIDE’ mark

Durferrit GMBH v. Office of Harmonisation in the Internal Market (Trade mark and Designs) (“OHIM”) and Kolene Corporation], ECFI, T-224/01, 2003.

The Court of First Instance dismissed the appeal brought by Durferrit GMBH against the decision of the First Board of Appeal of the OHIM, relating to trade mark opposition proceedings between Duferrit and Kolene Corporation, holding word marks ‘NU-TRIDE’ and ‘TUFFTRIDE’ not to be confusingly similar.

17. Burden of proof in parallel import cases

In Van Doren + Q.GmbH v Lifestyle sports and sportswear Handelsgesellschaft mbH and Michael Orth, C-244/00, the ECJ ruled on the burden of proof to be applied by Member States’ courts when hearing exhaustion cases. While it is permissible in principle for a Member State to require the defendant to prove that the claimant’s trade mark rights have been exhausted, in some cases the need to preserve the free movement of goods may mean that this rule has to be qualified. The ECJ said that where there is a real risk that placing the burden of proof on the defendant would allow the trade mark owner to partition the national markets, maintaining any price differentials between the Member States, the burden of proof remains with the trademark owner.

18. ECJ rules on registrability of shapes

In Linde AG, Winward Industries Inc. and Rado Uhren AG the ECJ considered how Articles 3(1) (b) to (d) of Directive 89/104/EEC of 21 December 1988 to Approximate the Laws of the Member States Relating to Trade Marks should apply to applications to register shape marks. In doing so, the Court employed two of the central concepts behind the absolute grounds for the refusal of registration of trade marks: the capability of the sign in question to distinguish the applicant’s goods from the goods of other undertakings; and the need to keep certain signs free for competitors to use.

19. Registration of band name by ex-members in bad faith

This was an appeal by one of the members of 80’s rock band SAXON, who was claiming that the registration of the band’s name as a trade mark by other former members of the band constituted bad faith.


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.