European IP Bulletin, Issue 30

Overview


Copyright

1. French Court Rules That Scents are ‘Works of Art’

On 25 January 2006, the L’Oreal group won a lawsuit against Bellure, a perfume firm that produced near-identical copies of some of its major perfumes. The Paris Court of Appeal confirmed that a scent is a work of the mind, just like a sculpture, a photograph or a musical work and that copying a fragrance constitutes a breach of author’s right.

2. The Droit De Suite Comes Into Force in the UK

With the introduction of the Resale Right Regulations 2006, living British artists can now enjoy remuneration from subsequent sales of their works of art. The Regulations enforce the Resale Right Directive that requires resale rights to be implemented across the entire EEA.

3. Allan Williams Entertainment v Hurd

Where a compromise agreement specified that former members of a band could not trade as the original band. It was held that a proper construction of the agreement meant that each party was obliged to prevent the promotion of themselves as the original band. This obligation was deemed to include the parties taking reasonable steps to correct erroneous third party descriptions that breached the compromise agreement.

Patents

4. Research in Motion UK v Inpro Licensing Sarl

Research in Motion v Inpro Licensing SARL was a patent action for revocation of a European Patent (UK) belonging to the defendant, Inpro Licensing SARL (Inpro). The grounds for revocation were invalidity for lack of novelty, obviousness and excluded subject matter. Inpro’s patent claimed a computer system that reduced the processing power used by portable computers making for quicker and easier to access the internet.

5. Rhone-Poulenc Rorer v Yeda Research and Development

In this case, Lewison J held that there is a strict limitation period under s.37 of the Patents Act, 1977, within which the parties should raise any proprietary objection in relation to a patent. Once this period is over, an amendment to bring a new claim will not defeat the defence of limitation by relating back to the original reference. He further clarified that in such proceedings, the hearing officer is not bound by the Civil Procedure Rules.

6. Non-Disclosure Agreements: Markem v Zipher Applied – Is There Any Change?

In the recent case of GE Healthcare (Amersham) v PerkinElmer Life Sciences, the Patents Court applied the test for entitlement to a patent confirmed last year by the Court of Appeal in Markem v Zipher for the first time. The case concerned the alleged disclosure of the invention in issue to Amersham who subsequently obtained the patent. Though Markem was not really put to the test, it appears to have changed little in the day-to-day application of the law on patent entitlement.

Trademarks

7. Polo-Playing Horseman, Soaps and Abrasives

On 21 February 2006, Court of First Instance delivered its judgement in the Royal County of Berkshire Polo Club Ltd v OHIM, allowing the Polo/Lauren Co. LP to retain its proprietary rights over the sign of a ‘polo-playing horseman’ drawing a comparison between toiletries and laundry products.

8. Compatative Advertising: When Do We Take Advantage Unfairly?

On 23 February 2006, the European Court of Justice handed down a decision in Siemens AG v. VIPA Gesellschaft für Visualisierung und Prozeβautomatisierung mbH. The case refers to the interpretation of Article 3a(1)(g) of Council Directive 84/450/EEC concerning misleading and comparative advertising, as amended by Directive 97/55/EC.

Technology

9. Yahoo Search Marketing Stops Bid on Competitors’ Trade Marked Keywords

Yahoo Search Marketing recently announced in an email to its advertisers a new policy to be implemented on 1 March 2006, which no longer allows bid on competitors’ trade marked keywords.

10. Google Image Search Thumbnails Breach Copyright

Internet search engine Google was found to be breaching copyright laws with its Google Image Search by a US Federal Court. Thumbnail images displayed on search results were found to have been copied from adult website Perfect 10.


Acknowledgements

McDermott Will & Emery would like to acknowledge the invaluable contribution to the Bulletin made by Professor Michael Blakeney, Ayan Roy Chowdhury, Luca Escoffier, Jerry Hsiao, Ramneek Jutla, Malcolm Langley, Tina Loverdou, Maria Mercedes Frabboni, James Mitchiner, Marisella Ouma, Rajesh Sagar, Ken Shao, Pekka Valo and Daphne Zografos from the Queen Mary Intellectual Property Research Institute, University of London.