European IP Bulletin, Issue 57

Overview


In Depth

Commercial

Law Applicable to Non-Contractual Obligations
Regulation 849/2007/EC harmonises the way EU Member States determine which law applies to non-contractual obligations.

Exclusive Jurisdiction Clause
In Middle Eastern Oil LLC v National Bank of Abu Dhabi the English High Court stayed proceedings after finding that a banking agreement conferred exclusive jurisdiction on the courts of the United Arab Emirates.

Intellectual Property

Singapore Treaty on the Law of Trademarks
The Singapore Treaty on the Law of Trademarks has entered into force following Australian ratification.

UK IPO Backtracks on Fast Track System for Patent Processing
The UK Intellectual Property Office (IPO) has backtracked on the fast track system for patent processing following a consultation backlash.

UK IPO Launches New Patents Databases
The UK Intellectual Property Office (IPO) has launched two new patents databases: Patents Endorsed Licence of Right (LOR) and Patents Not in Force (NIF).

Companies Name Tribunal
The Companies Name Tribunal has upheld the first objection to the registration of a company name brought under the new Section 69 procedures of the Companies Act 2006.

Trade Marks

Comparison of Marks as a Whole

In Shaker di L. Laudato & C. Sas v OHIM, the Court of First instance applied guidance given by the European Court of Justice to the effect that the Court must make a comparison of the marks as a whole and not solely against the dominant element of the composite mark.

Losing Control of Own Name When Leaving a Business
In Hotel Cipriani SRL v Cipriani (Grosvenor Street) Ltd, the High Court of England and Wales ruled that, despite being Ciprianis of some repute themselves, the owners of the Cipriani restaurant in London have infringed a well-known trade mark and passed their business off as having a connection with the Hotel Cipriani in Venice and its sister hotels under the same name.

Non-Profit-Making Organisation and “Genuine Use”
In Verein Radetzky-Orden v Bundesvereinigung Kameradschaft “Feldmarschall Radetzky” the European Court of Justice held that the fact that a charitable organisation does not seek to make a profit does not mean that its objective cannot be to create and preserve an outlet for its goods or services.

Patents

Employee Inventors – First Ever Award of Compensation
In Kelly and Chiu v GE Healthcare Ltd, the English High Court awarded compensation to employee inventors in recognition of their efforts in inventing a patented product.

E-Commerce, IT & Banking Technology

Interim Injunction or Alleged Breach of Software Distribution Agreement
In Talaris (Sweden) AB v Network Controls International Ltd, the judge concluded that whilst the software developer was entitled to make “preparatory arrangements” for the eventual termination of the exclusive distributor agreement, such arrangements did not extend to marketing jointly with a competitor of the Claimant a product incorporating the software at a trade fair.

Advertising & Marketing

Concerns About Advertising Over Digital Media
The Advertising Standards Authority’s (ASA) Compliance Report reveals that where the self-regulatory rules apply in digital media there is a high compliance rate. However, the ASA’s remit does not extend to companies’ own websites (other then in regards to sales promotions) and around 70 per cent of complaints investigated could not be resolved as they related to communications that are currently outside that remit.