European IP Bulletin, Issue 44

Overview


In Depth

Trademarks

A global assessment is necessary in QUICKY case
On 20 September 2007, in Société des Produits Nestlé SA v OHIM, Quick restaurants SA(Case C-193/06P), the European Court of Justice handed down its decision in respect of an appeal against the decision of the Court of First Instance in Case T-75/04.

Defensive trade mark series
Following, rejection of an opposition to a Community Trade Mark by the Opposition Division of OHIM, the Fourth Board of Appeal of OHIM and the Court of First Instance (“CFI”), the ECJ recently confirmed these decisions and upheld the registration of the Community Trade Mark in Il Ponte Finanziaria SpA v Office for Harmonisation of the Internal Market (Trade Marks and Designs) (OHIM) and F.M.G. Textiles Srl, C-234-06 P, (13 September 2007).

ECJ washes away an appeal for washing tablet
Lately, there have been a number of Community Trade Mark applications being made for the registration of figurative trade marks used for washing and cleaning products. Some can be registered while the others cannot, the basic principle is that a trade mark is that the figurative mark must be distinctive and the distinctiveness must be assessed on a global basis. Applying this principle, on 4 October 2007, the European Court of Justice dismissed the appeal in Henkel KGaA (Henkel) v Office of Harmonisation in the Internal Market (OHIM) involving a non-distinctive figurative mark.

Trade mark infringement by company name
In the recent case of Céline Sàrl v Céline SA, Case C-17/06, (11 September 2007), the ECJ answered the preliminary question from a French Court of Appeal as to whether or not use of a trade mark in a company’s name was infringing use under the Trade Mark Directive.

Is your Vogue old enough?
The Court of First Instance, in Advance Magazine Publishing Inc. v OHIM, Case T-481/04, held in favour of the applicant in respect of a case relating to opposition proceedings for a Community Trade Mark, when the applicant had not relied on an earlier international registration in an earlier appeal.

Copyright, Media & Entertainment

Curbing online piracy-rethinking strategy?
On 4 October 2007, the U.S. District Court of Minnesota handed down its decision in the case of
 Capitol Records v Jammie Thomas Civil no. 06-1497 (MJD/RLE) (also known as RIAA v ). This was the first file sharing case filed by the music industry against an individual to go to trial. The Court found the defendant guilty of wilfully infringing copyrighted sound recordings and fined her $222,000 in damages.

What Price Stress?
On 25 June 2007, the High Court ruled that a Labour MP who had successfully sued a national newspaper for libel was not entitled to enhanced or ‘indemnity’ costs under the new Civil Procedure Rule (CPR) rule 36.14.

Commission clears BMG – Sony joint venture…again!
In July 2004, the European Commission authorised the creation of a joint venture between BMG and Sony, but in 2006 the Court of First Instance annulled the decision. Now three years later, and after a new notification from the parties, the Commission has announced the results of an ‘in-depth investigation’ confirming its initial decision to allow the transaction.

Legislation News

  • French Senate adopts London Agreement
  • The Enterprise Act 2002 (Disclosure of Information for Civil Proceedings etc.) Order 2007

News

  • First sport betting ad aired on TV
  • Changes in Community TM Opposition Proceedings