European IP Bulletin, Issue 37

Overview


In Depth

Hot Topics

Weighing up the Gowers Review

On 2 December 2005, the Chancellor, Gordon Brown, announced as part of his pre-Budget Review package that he Andrew Gowers, former editor of the Financial Times, would head a review of the UK’s intellectual property framework. The backdrop to the Gowers Review was the UK Government’s recognition of the increasing importance of knowledge-based industries in the global economy, especially in manufacturing, science and the creative industries. Duncan Curley, a Partner in our London Office outlines the Gowers Review.

‘Horses for courses’: Should competition law shape IP rights?

In Attheraces Ltd and another v The British Horseracing Board and another [2007] EWCA Civ 38, the appeal by the British Horseracing Board was allowed in the context of a dispute over whether pricing policies adopted by the Board for the use of pre-race information by stakeholders of the betting industry were excessive. In overturning the trial judge’s approach, the Court of Appeal provided guidance on the tests to be used when assessing the economic value of a product supplied in a downstream market.

Prince, privacy, press and public interest

Should the right of the press to freedom of expression override an individual’s right to privacy? And if that individual is a member of royalty, does public interest dictate protecting his privacy or satisfying our curiosity? The discussion of the UK Court of Appeal in Associated Newspapers Ltd v HRH Prince of Wales [2006] EWCA Civ. 1776 highlights the emerging problem between protecting the privacy of a public figure vis-à-vis freedom of expression and the public interest, and the balance that is required to be achieved between these two rights.

Copyright & Technology

Music copyright in 40 year old organ solo: Who owns this golden oldie?

In December 2006, the High Court, in the case of Matthew Fisher v Gary Brooker and Onward Music Ltd [2006] EWHC 3239 (Ch), had to address some difficult issues in respect of the authorship and ownership of music copyright in an arrangement of A Whiter Shade of Pale – a successful song from the 1960’s.

Patents

Inconsistent interpretations of patents between different European jurisidctions: Angiotech v Conor Medsystem

In the case of Angiotech v Conor Medsystem [2007] EWCA Civ 5, the only difference between the patent and prior art was the fact that the patentee had named one specific drug along with many others, without disclosing why it was better or different than the others. According to Court of Appeal, this will not entitle him to claim an invention, as merely naming one more drug does not involve making a further valuable contribution to the existing human knowledge. Howveer, the same patent had previously been held partially valid by the Dutch District Court in an earlier case.

UKPatent Office’s Consultation Report: has it re-invented the “inventive step”?

The UK Patent Office has just released the findings of its consultation relating to the assessment of the inventive step requirement in United Kingdom patent law and practice. There have been calls in the past for a change in the approach of the UK Patent Office in relation to how it applied the inventive step to new technologies such as computer implemented inventions and biotechnological inventions. The conclusion: the basic law relating to inventive step does not require any changes. However, the report expressed the necessity to maintain consistency in the application of the “inventive step” requirement in high technology fields such as biotechnology.

Trademarks & Domain Names

Dyson’s transparent trade mark muddied by the ECJ

On 25 January 2007, in Case C-321/03, the European Court of Justice refused to allow the vacuum cleaner company Dyson to register a mark which was “a transparent bin or collection chamber” for vacuum cleaners. Cheng Tan, a European trade mark attorney in our London Office, outlines the decision.

High Court approved Yarns for ELLE

On 24 January 2007, the Chancery Division of the High Court in Hachette Filipacchi Presse S.A. v Saprotex International (Proprietary) Limited [2007] EWHC 63 (Ch), dismissed an appeal by the publisher of ELLE magazine that was made against the registration of the trade mark ELLE in relation to knitting wools and yarns. The case affirms that if there is no similarity between the products, the “likelihood of confusion” between the marks is unlikely.

CFI prevents free-riding on the coat-tails of famous trade marks – like TDK

In a recent decision, the Court of First Instance upheld the rejection of a trade mark application on the basis of reputation and distinctive character acquired by an earlier identical mark through sponsorship activities. The Court also highlighted the fact that a non-hypothetical future risk of unfair advantage from an earlier mark is sufficient to bar the application.

Legislative News

  • New European Patent Convention is available now at EPO website
  • New Codified Misleading and Comparative Advertising Directive adopted
  • New Codified legislation on copyright protection
  • The UK impose Regulations on the Advertising of Foreign Gambling