European IP Bulletin, Issue 5



1. The Community Patent

Duncan Curley of McDermott Will & Emery’s London office gives an overview of the proposed European Community Patent which businesses should be able to apply for within five years.

2. Second Medical Use Claims & The Harmonisation of Patent Law in Europe

For pharmaceutical companies inconsistencies in the interpretation of second medical use patent claims by the European Patent Office and the national courts of the European Member States may give rise to complications regarding the validity of patent claims. Simone Blakeney of McDermott Will & Emery’s London office discusses the implications of these idiosyncrasies and their elimination by the proposed Community Patent Court.

3. OHIM Publishes Details Of Its New E-Filing Service For Design Protection

The Office for Harmonisation in the Internal Market (Community Trade Marks and Designs Registry) (OHIM) has published on its website details of how to file for design protection electronically.

4. Moscow Arbitration Court To Rule Over Sale Of Soviet-Era Films

A Russian film studio has applied to obtain a ruling annulling the sale of 1,200 classic Soviet-era cartoons to a US film company.


5. Licensing Digital Information

The Copyright Licensing Authority and the United Kingdom Media Monitoring Association have developed terms of a generic licence that will facilitate the delivery of press cuttings by cutting agencies to their clients, while respecting the interests of copyright owners.

6. Unauthorised Use Of Elvis Costello Photograph

In Gabrin v Universal Music Operations [2003] EWHC 1335 (Ch), Universal Music used a silk-screen print within an album booklet, without authorisation from copyright owner of photograph.

7. Masthead Copyright Infringement

Scottish Universal Newspaper v Mack (2003) ScotCS 167

The Scottish Outer House Court of Session has confirmed the well established principle that, if a substantial part of a copyright work is copied, it is irrelevant whether a new work in which copyright subsists has been created.


8. Celltech Appeal Allowed

Celltech Chiroscience v MedImmune Inc  [2003] EWCA Civ 1008

The Court of Appeal, on appeal from the first instance decision of Mr Justice Jacob, were required to assess the doctrine of equivalents and file wrapper estoppel under post-Festo 2 US law. In doing so they partially overturned first instance decision, finding both amendment based estoppel and argument based estoppel, albeit with one of the three judges dissenting.

9.  BASF And SmithKline Cross Appeals Dismissed

BASF AG v SmithKline Beecham [2003] EWCA Civ 872

This case concerned an appeal by SmithKline Beecham Plc against a judgment of Pumfrey J of 12 July 2002 and a cross appeal by BASF AG. Both appeals were dismissed on 25 June 2003.

10.  Add A Hint Of Paroxetine Salt

The decision handed down by the Court of Appeal on 25 June in Synthon BV v SmithKline Beecham [2003] EWCA Civ 861 emboldens the position of patentees facing revocation orders for want of novelty.

11.  Ajinomoto Sweetener Patent Upheld

In Daesang Corporation v Ajinomoto Co Inc [2003] EWHC 973 (Ch), the Patents Court upheld the validity of a patent under attack of the respondent whose revocation was sought by the claimants on grounds of obviousness, insufficiency and anticipation.


12.  Three’s company, Two’s A crowd

In Adidas-Salomon AG and Adidas Benelux BV v Fitnessworld Trading Ltd, Case C-408/01, Advocate General Jacobs considered whether Article 5(2) of the Trade Mark Directive applies to use by a defendant of his sign on similar or identical goods. He also turned his attention to the precise meaning of the types of harms identified in Article 5(2) and whether trade mark use is necessary for infringement under that article.

13.  Interaction Between The Elements Of A Mark: CFI Upholds OHIM On Its Examination Methodology

In Best Buy Concepts v OHMI (BEST BUY) CFI T-122/01, the Court of First Instance has upheld the decision of the OHIM Third Board of Appeal in rejecting the application for a figurative trade mark incorporating the word element BEST BUY. In doing so the CFI approved the method of first examining the separate elements of the mark applied for.

14.  Ansul To The Question Of Genuine Use

In Laboratories Goemar SA & La Mer Technology Inc[2003] EWHC 1382 (Ch), Jacob, J. was unclear how much use is too little within the meaning of the directive to revoke the registration of Laboratories Goemar SA (hereafter Goemar) trade marks. He requested the ECJ formulate a de minimis test for national court to distinguish genuine from covetous use in cases involving small scale enterprises. The ECJ ruled that national court should apply the decision in Ansul BV(C40/01), when assessing the genuineness of use.

15.  Russia Claims Geographical Protection For Russian Vodka

In June Russia’s Patent Office ruled that “Russian Vodka” can only be labelled as such if it is distilled in the country itself and if it tastes like the genuine article.


McDermott, Will & Emery would like to acknowledge the invaluable contribution to the Bulletin made by the following individuals at Queen Mary Intellectual Property Research Institute:

Abigail Browne, Alan Cunningham, Alison Firth, Malcolm Langley, Florian Leverve, James Mitchiner, Aditya Nagarsheth, Mike Rhys-Thomas, Ilanah Simon and Daphne Zografos.