European IP Bulletin, Issue 36

Overview


In Depth

Hot Topics

1. English Court of Appeal Clarifies Position in Respect of Computer Programs and Business Methods 

On 27 October 2006, the English Court of Appeal handed down an important and timely decision clarifying its position as to the patentability of computer programs and business methods. Justin Hill, Director of Prosecution in our London Office, outlines the decision.

2.  YouTube Dare to Share

The rise, merger and predicted fall of video share site, youtube.com is discussed, as it tries to push the boundaries of copyright law in the US and worldwide in spite of a number of decisions of the US Supreme Court including Grokster and Napster, as well as the changing approach of Big Brother entertainment houses to distribution, which has, in the past, and will, in the future, determine the course of copyright laws.

Copyright and Technology

3.  Spain and Italy Forced to Adopt a More Restrictive Public Lending Exemption

Facing claims that they had too loosely implemented the provision of the Rental and Lending Directive that grants an exemption from the requirement to pay remuneration for public lending, Italy and Spain were found to have failed to fulfil their obligations under Articles 1 and 5 of the Directive in Commission of the European Communities v Kingdom of Spain (C-36/05) and Commission of the European Communities v Italian Republic (C-198/05).

4. Sony puts Grey Importers Out of Business

On 18th October 2006, the Chancery Division of the High Court gave a helpful ruling for IP owners in KK Sony Computer Entertainment v Pacific Game Technology [2006] EWHC 2509 (Pat). This is another ‘exhaustion of rights’ case, with a factual variation in that it involves sales of the claimants’ goods into the EEA via an internet website.

Patents

5. Is Treating Pain a Novel Issue?

On 30 October 2006, the English Patents Court handed down a decision in the case Merz Pharma GmbH & Co. KGaA v Allergan Inc. which concerned an action to revoke a European patent for added matter, lack of novelty, obviousness and insufficiency.

Trademarks & Domain Names

6. Look Alikes and Smell Alikes

Trade mark infringement under s 10(3) of the UK Trade Marks Act 1994 can be established where similar packaging takes unfair advantage of the reputation of an existing brand, even in the absence of any likelihood of confusion.

7. Reckitt & Colman LTD – Appeal For “Bladeless”

The Second Board of Appeal annulled the decision made by the examiner regarding the registration of “BLADELESS”, since there was no public interest or other valid reason why the term could not be a trade mark. Furthermore, the Board found the meaning of the word mark, and its connection to the goods sought was not descriptive at all, but believed that no other competitors of the same goods would want to use the same word mark.

8. Stonygate 48 Limited and Wayne Mark Rooney v. Huw Marshall

Stoneygate 48 Limited et al v Huw Marshall relates to a recent domain name dispute with the well-known footballer, Wayne Rooney, in England.

Media & Advertising

9. LIDL Belgium GMBH & CO KG V Etablissementen Franz Colruyt NV

The European Court of Justice has clarified the rules relating to comparative advertising in a case between supermarket chains Lidl and Colruyt. While general price comparisons were allowed and there was no necessity to display all individual prices, it was important that all information was verifiable and that different competitors could be distinguished in comparisons between several competitors.