European IP Bulletin, Issue 45

Overview


In Depth

Review Article

Yeda v Rohne: House of Lords rule on patent entitlement
The House of Lords has clarified the rules relating to patent entitlement in the case of Yeda v Rohne [2007] UKHL 43. According to the ruling, where a person seeks joint entitlement to a patent, he merely has to prove his contribution to the inventive concept underlying the claimed invention. On the other hand, where he seeks to be substituted as the sole inventor, not only does he have to prove that he contributed to the inventive concept, but also that the inventor named in the patent has not made any contribution towards the inventive step. In its ruling, the Law Lords unanimously overturned the Markem v Zipher principle.

Sport & Media

The FA goodwill in “World Cup Willie”
In Jules Rimet Cup Ltd v The Football Association [2007] EWHC 2376 (Ch), the Football Association successfully defended its interests in “World Cup Willie”, the mascot of the 1966 World Cup. In light of the residual goodwill associated with the mascot in the United Kingdom, the judge concluded that the applications by the Claimant to register two trade marks related to World Cup Willie were filed in bad faith.

Court of Appeal unbends “Bent Coppers” decision
The Court of Appeal overturned the decision of the High Court in the case Michael Charman v Orion Publishing Group Limited, Graeme McLagan [2007] EWCA Civ 972. In doing so, the Court agreed with the Defendants that, although the book had a defamatory meaning, the defence of qualified privilege applied.

Trade Marks

CFI speaks out for the pencil-shaped loudspeaker
The Court of First Instance (CFI) annulled the decision of the First Board of Appeal of the Office for Harmonization in the Internal Market (OHIM) in Bang & Olufsen A/S v OHIM regarding an application for a three-dimensional mark for loudspeakers. The CFI laid down two important factors to determine the distinctive character of a trade mark according to Article 7(1)(b) of Council Regulation No. 40/94.

Squeeze Bottle Lacked Distinctive Character
The European Court of Justice has confirmed that the distinctiveness criterion is crucial for the registration of a three-dimensional shape as a Community trade mark, even if it has already been registered nationally.

Designs

The informed user of air freshener
In Procter & Gamble Co v Reckitt Benckiser (UK) Ltd [200] EWCA Civ 936, the Court of Appeal has confirmed that, in considering an allegation of breach of design right, the court should adopt the standpoint of an “informed user” who is more familiar with the product than the average consumer. This is the first case clarifying the scope of Registered Community Designs

Patents

How micro is a micro-emulsion?
The Court of Appeal has handed down its decision in the case Novartis (AG) v IVAX Pharmaceuticals UK Limited, which concerned an appeal lodged by Novartis against a decision declaring IVAX’s Equoral product, as not infringing Novartis’ UK patent.

Patent Amendments: discretion after trial
The Court of Appeal has handed down its judgment on the allowability of an amendment to a patent, refusing the final amendment requested, based not on an objection to the amendment itself, but on the consequences for future litigation.

Legislation News

  • Further changes to the Patents Act
  • European Community Accedes to International Design Treaty
  • Swiss Parliament ratifies WIPO Internet Treaties
  • Companies Act 2006 and Registration of a Company Name

News

  • DEFRA consultation—protection of Scotch whisky
  • € 12 million administrative fine for illegal downloads in Italy
  • Gambling Commission—Position Paper on integrity in sports betting
  • EU web security—ENISA concerns over MySpace and other online social networks