European IP Bulletin, Issue 51


In Depth

Trade Marks

The bubble bursts for O2
In the recent European Court of Justice (ECJ) decision in O2 Holdings Limited and O2 (UK) Ltd v Hutchinson 3G UK Limited [2008] C-533/06, the ECJ has provided new guidance on the use of competitors’ trade marks in comparative advertising. Amanda Easey, an Associate in the London office of McDermott Will & Emery, outlines the decision.

The knives are out—Sabatier composite trade marks
In Rousselon Freres et cie v Horwood Homewares Ltd [2008] EWHC 881 (Ch), Mr Justice Warren has given a long and considered judgment on the assessment of the likelihood of confusion between an earlier trade mark and a later registered composite trade mark containing that earlier mark.

The likelihood of confusion and EU languages
In Redcats SA v OHIM, [2008] T-246/06, the Court of First Instance has dismissed a French company’s attempts to argue that a Community trade mark application should be compared at a phonetic and conceptual level by reference only to the language in which registration was made and not in light of the language of any earlier trade mark. The judgment sets out the steps required when comparing trade marks containing different Community languages.


High Court tells Patent Office to think again on “mental acts”
In its decision in Kapur v Comptroller-General of Patents [2008] EWHC 649 (Pat), the High Court of England and Wales has given a narrow interpretation to the mental acts exclusion from patentability in respect of a claimed method for preserving documents which have been deleted or overwritten.


Software ownership
On 9 April 2008, the UK Court of Appeal handed down its decision in Laurence Wrenn v Stephen Landamore [2008] EWCA Civ 496. Mr Wrenn’s appeal was dismissed and he was held liable to pay Mr Landamore royalties for his work. Mr Wrenn was also precluded from pursuing his copyright claim.

Confidential Information

NICE drug appraisal process and procedural unfairness
In this recent decision, the UK Court of Appeal has ordered the National Institute for Health and Clinical Excellence (NICE) to allow pharmaceutical manufacturers access to information on the decision making process regarding recommendations for the prescription of the Alzheimer’s drug ARICEPT. This article examines the Court’s decision and, in particular, the Court’s analysis of whether NICE could restrict access to the information on the grounds of confidentiality.

Data Protection

New powers for Information Commissioner’s Office to fine for data protection breaches
The Criminal Justice and Immigration Act received Royal Assent on 8 May 2008. This article examines the new legislation and sets out the new powers of the Information Commissioner’s Office to impose substantial fines on organisations that deliberately or recklessly commit serious breaches of the Data Protection Act 1998.

Communications and New Media

Communications data retention—internet access, IP telephony and email
The UK Government’s proposal for a Communications Data Bill was announced on 14 May 2008. This article examines the Bill that is intended to transpose the remaining provisions of Directive 2006/24/EC on the retention of communications data into UK law.


Unfair commercial practices and misleading and comparative advertising
This article examines the new Consumer Protection from Unfair Trading Regulations (CPRs) and the Business Protection from Misleading Marketing Regulations (BPRs) that came into force in the United Kingdom on 26 May.


Sport White Paper: Parliament, specificity of sport and the FIFA 6+5 rule
The European Parliament has adopted a White Paper on Sport in response to the Commission’s 2007 White Paper on Sport. This article outlines the main issues raised by the Parliament.

Domain Names not abusive, just lucky
The Nominet Appeal Panel has ruled in Myspace Inc v Total Web Solutions Ltd (DRS 04962) [2008] that the domain name registered by Total Web Solutions does not have to be transferred to MySpace Inc. This article analyses the decision.