European IP Bulletin, Issue 32


Hot Topics

1. Pirate Bay Shut Down

Swedish authorities announced that they have shut down “The Pirate Bay”, one of the world’s largest and most well known facilitators of online piracy.


2. The Legacy of Bob Marley and The Wailers

The High Court in the United Kingdom has dismissed claims by Mr. Aston Barrett, a former member of the band, the Wailers, for a share of income from songs that were recorded prior to Bob Marley’s demise in 1981. The court further dismissed Mr.Barrett’s subsequent claims for infringement of performers’ rights as well as the claim for damages by way of counterclaim by the defendants for breach of a settlement agreement.


3. IVAX Pharmaceuticals UK Ltd V AKZO Nobel UK

The UK Patents Court gave its judgment in a case concerning the revocation of a third generation patent belonging to Akzo on the steroid Tibolone used in hormone replacement therapy for women. Lewison J found the patent to be invalid on grounds of obviousness in light of prior first and second generation patents owned by Akzo. It was found to be obvious in light of both common general knowledge and prior art.


4. Shifting Test in Likelihood of Confusion

The European Court of Justice handed down a decision denying the upholding of an opposition based on the mark PICASSO by the Picasso estate against the mark PICARO applied for by Daimler Chrysler for inter alia motor vehicles. In their decision the Court stated that a tribunal deciding such matters should not be expected to consider the consumer’s average attention level for each different situation and concluded also that the post sale confusion test applied in Arsenal v Reed could not be used to mitigate against a finding of a lack of confusion.

5. Doncaster Pharmaceutical V Bolton Pharmaceutical

This was an appeal from Doncaster Pharmaceutical on the summary judgment granted earlier to Bolton Pharmaceutical. The UK Court of Appeal found the case not suitable for summary judgment as there was insufficient evidence before the Court regarding the ownership of the mark in different countries. Moreover, it was difficult to clarify whether the doctrine of exhaustion applied where there were possible economic links between the Assignor and the Assignees.

6. Are Sausages All the Same?

On 31 May 2006 the European Court of First Instance handed down a decision in the case Wim De Waele v Office for the Harmonization in the Internal Market (OHIM) which concerned OHIM’s partial refusal to register a three-dimensional trademark in the shape of a sausage.

7. Compare with Care

The European Court of Justice clarified that a competing supplier does not take unfair advantage of the distinguishing mark of the manufacturer by using it when it is known in the ‘specialist circles’, reinstating its interpretation of Art 3a(1)(g) held earlier in the Toshiba Europe case, adding that absence of such use would affect consumers and competition.


8. Research in Motion UK LTD V Inpro Licensing SARL

In Research in Motion v Inpro Licensing SARL the main question before the Court was whether patent rights of Inpro were infringed by the operation and supply of the Blackberry mobile communications system in the UK.


 9. Champions League On the Internet is Off-Side, Says UEFA

By disseminating broadcasts of European Champions League Football matches over their website “” for viewing by subscribers, the High Court in Union Des Associations Europeennes de Football & Ors v Briscomb & Ors found that the website owners had infringed the copyright in those live broadcasts and ancillary works owned by the Union of Football Associations.

10. Phones4U Wins Passing Off Appeal Against Online Seller Phone4U

In a Court of Appeal judgment, the trade mark of the High Street mobile phone chain Phones4U was not infringed by online mobile phones seller when it used the domain name “” However, the Court of Appeal found that the Phones4U chain had goodwill that was protected by passing off.


McDermott Will & Emery would like to acknowledge the invaluable contribution to the Bulletin made by Dr. Uma Suthersanen, Angel Adrian, Jerry Hsiao, Maria Mercedes Frabboni, James Mitchiner, Marisella Ouma, Rajesh Sagar, Pekka Valo, Ramneek Jutla, Luca Escoffier, Ayan Roy Chowdhury from the Queen Mary Intellectual Property Research Institute, University of London.