European IP Bulletin, Issue 53

Summary

In a previous version of The European IP Bulletin Issue 53 August/September 2008 the piece on Aerotel v WaveCrest Group Enterprises [2008] EWHC 1180 (Pat) reported in error that Aerotel alleged that WaveCrest had dishonestly doctored a document being relied on as prior art in this case. Although Aerotel in this case did reassert the allegations of doctoring it had made in a separate US action, at no time was it alleged that WaveCrest was in any way involved in or responsible for this. This error has now been corrected. We apologise to WaveCrest and our readers for this error and any confusion that it may have led to.

Patents

Methods of doing business—the sequel to Aerotel
In Aerotel Ltd v WaveCrest Group Enterprises [2008] EWHC 1180 (Pat), HH Judge Fysh has essentially disregarded the previous Court of Appeal decision and revoked the Aerotel patent as being obvious and comprising unpatentable subject matter (i.e.,for being a method of doing business).

If it is obvious to try, it still might not be obvious (obviously)
In Conor Medsystems Inc v Angiotech Pharmaceuticals Inc[2008] UKHL 49, the House of Lords has revisited the test of “obvious to try” most often raised in patent validity actions. The House has also reversed decisions of both the High Court and Court of Appeal that Angiotech’s patent for taxol coated stents was invalid for obviousness.

Loose lips sink ships: posting inventions on secure internet servers may affect your patent rights in USA
InSRI International v Internet Security Systems Inc and Symantec Corp(US Federal Circuit) [2008] 2007-1065, a U.S. court held that a disclosure posted onto a computer server that is for all intents and purposes “secure” could still irrevocably destroy the novelty of a U.S. patent.

Trade Marks

Suspension of earlier declaration of invalidity of trade marks
On 18 July 2008, the English High Court handed down its decision in Rousselon Freres et cie v Horwood Homewares Ltd [2008] EWHC 1660 (Ch), in respect of an appeal against an earlier decision of Mr Justice Warren granting Rousselon Freres a declaration of invalidity against two UK trade marks registered to Horwood Homewares for knives in Class 8.

IT marks and likelihood of confusion
In SHS Polar Sistemas Informáticos SL v OHIM [2008] T-79/07 (unreported), the Court of First Instance has rejected an opposition, originally upheld by the Office of Harmonization for the Internal Market (OHIM) Opposition Division, brought by the owner of the Community trade mark POLAR, registered for computer software, against an application to register the figurative mark POLARIS for computer software specifically for financial institutions.

Promotional slogans—registrability
In the recent decision of the Court of First Instance (CFI) in Ashoka v OHIM [2008] T-186/07 (unreported), the Applicant tried to persuade the Court that the word mark DREAM IT, DO IT! was registrable as a Community trade mark for various services. However, the CFI refused to overturn a Board of Appeal decision and rejected the mark on the basis that it would be perceived as a promotional and advertising slogan and not as an indication of the commercial origin of the services in question.

How not to run a CTM opposition
In El Corte Inglés SA v OHIM [2008] T-420/03 (unreported), the Court of First Instance (CFI) refused to overturn an Office of Harmonization for the Internal Market (OHIM) Board of Appeal decision rejecting an opposition to the registration of a Community trade mark. The CFI also held that the Board had been entitled to exercise its discretion to refuse to allow the opponent, the well known Spanish department store chain, El Corte Inglés, to submit evidence it had failed to adduce to the Opposition Division.

Adidas wins U.S. case against two and four stripe logos
Less than a month after the European Court of Justice ruling in Adidas v Marca Mode [2008] C-102/07, Adidas has won a U.S.$305 million payout in the United States from Collective Brands in a lawsuit that was seven years in the making. A federal jury in Adidas AG v Collective Brands Inc(Portland, Oregon, Federal District Court, 8 May 2008) decided that both the two and four stripe logos used by Collective Brands on its various ranges of footwear infringed the well known and, in the jury’s collective mind, “iconic” three stripes of Adidas.

Copyrights

Sound recordings and co-written musical works—term of protection
The European Commission has issued a formal proposal to extend the term of copyright protection for sound recordings from 50 to 95 years.

Entertainment & Media

Privacy—freedom of expression and exemplary damages
The well publicised decision in Max Mosley v News Group Newspapers Ltd [2008] EWHC 1777 (QB) is set out in this article.

Data Protection

Binding corporate rules—consolidated guidance
The Article 29 Working Party has published more detailed “guidance” on the Binding Corporate Rules (BCRs) that goes some way to making the role of Data Protection Officer in a multinational organisation one of the most challenging back office roles of any industry.

Domain Names

Nominet—changes to dispute resolution policy and procedure
Nominet has finalised revisions to its policies and procedures, which took effect on 29 July 2008. This article summarises the most relevant changes.

Narnia.mobi-use as an email address
The panel in CS Lewis (PTE) Ltd v Richard Saville-Smith [2008] WIPO D2008-0821 was not convinced that the Respondent had registered the domain name narnia.mobi for use only as a Narnia-related email address for his son, apparently a big Narnia fan. Whilst such use could not of itself constitute a legitimate interest for the purposes of the Uniform Dispute Resolution Policy (UDRP), the panel also found “opportunistic” bad faith on the basis that Mr Saville-Smith used the domain name to mislead users to an advertising site while being aware of the fame and distinctiveness of the term “Narnia”.

Sport

Conditional access-“illicit device” and Euro defences
In Karen Murphy v Media Protection Services Ltd [2008] EWHC 1666 (Admin), the High Court of England and Wales agreed to seek guidance from the European Court of Justice on a number of Euro defences relied on by Mrs Murphy in her appeal against convictions under the conditional access provisions of the Copyright Designs and Patents Act 1988 (CDPA). This latest judgment relates to her defence based on the free movement and competition rules of the EC Treaty along with the crucial issue of whether the Greek decoder card and box were “illicit” in the sense intended by the Conditional Access Directive (98/84/EC), upon which the CDPA provisions are based.

E-Commerce

Second EU enforcement sweep–websites selling ring-tones and other mobile phone services
On 17 July 2008, the European Commission announced the results of the second EU consumer protection enforcement sweep, this time into websites offering mobile phone services such as ring-tones and wallpapers. The sweep, which covered more than 500 websites across the 27 EU Member States plus Norway and Iceland, revealed suspected breaches of EU consumer protection rules on 80 per cent of the sites checked. This article sets out the main problems that were identified.