European IP Bulletin, Issue 59

Overview


In Depth

COMMERCIAL

Consumer Rights Directive

The European Commissioner for Consumer Protection has addressed concerns in a speech to the European Parliament’s Committee for the Internal Market and Consumer Protection

INTELLECTUAL PROPERTY

Online Copyright Infringement—Proposed Rights Agency

The UK Government has published a discussion paper entitled Copyright in a Digital World: What Role for a Digital Rights Agency? inviting views on the role such an organisation could play in protecting and promoting the legal use of copyright content online.

Trade Mark Applications for Shopping Centre Services

The UK Intellectual Property Office has issued a practice amendment notice stating that it will now accept trade mark applications for shopping centres.

DATABASE RIGHT

Extraction and Substantial Part

In Apis-Hristovich EOOD v Lakorda AD [2009] C-545/07 (unreported),the European Court of Justice has given a broad interpretation to the concept of “extraction” in relation to the scope of protection enjoyed by holders of sui generis right under the Database Directive (96/9/EC).

COUNTERFEITING & PIRACY

Simplified Customs Procedure and Penalties in the Anti-Piracy Regulation

The European Court of Justice has ruled that initiation of the simplified procedure laid down in Article 11 of the Anti-Piracy Regulation (1383/2003/EC) does not mean that customs authorities cannot impose a “penalty” within the meaning of Article 18 of the Regulation on the parties responsible for importing the suspected counterfeit goods.

TRADE MARKS

Genuine Use Attack on Mark in the IT Sector

The Appointed Person held that use by Apple of its TIME MACHINE mark during a 17 day period at the end of the five year period was sufficient to establish genuine use of the mark.

Unregistered Earlier Right Opposition

A Trade Marks Registry decision, rejecting an opposition to the registration of a trade mark, has been overturned following an appeal supported by substantially inconsistent evidence.

PATENTS

The “Experimental Use” Defence

CoreValve Inc v Edwards Lifesciences [2009] EWHC Pat 6 provides guidance on the little used defence of “experimental use” under Section 60(5)(b) of the Patents Act 1977.

Excluded Subject Matter: “Technical Contribution”

In AT&T Knowledge Ventures LP and CVON Innovations Ltd [2009] EWHC 343 (Pat) Mr Justice Lewison dismissed the appeals, upholding the earlier decisions that the inventions claimed methods of doing business as such and failed to make a technical contribution to the known art.

ADVERTISING & MARKETING

CAP and BCAP Codes Review

The Committee of Advertising Practice (CAP) and its broadcast equivalent, BCAP, have published separate consultations on the codes regulating broadcast and non-broadcast advertisements.

ASA Adjudication Against Midasplayer.com t/a King.Com

The Advertising Standards Authority (ASA) found that, as King.com’s website included a link to a gambling site, RoyalGames.com, King.com’s TV advert promoting its online games of skill service breached a host of BCAP Code rules.

ASA Adjudication Against Wm Magners Ltd

Wm Magners Ltd and Clearcast both considered a TV ad for Magners draught cider compliant with the advertising rules for alcohol, for various reasons. However, the regulator disagreed, saying that the advert breached the Code by suggesting that alcohol would boost confidence and lead to the success of a social occasion.

DATA PROTECTION

Database of Construction Workers

The Information Commissioner’s Office (ICO) has issued an Enforcement Notice under the Data Protection Act 1998. The ICO’s investigation revealed that, for over 15 years, Mr Ian Kerr had been running a database of construction workers, which subscriber firms could consult before deciding whether to offer an individual employment. The database contained personal information, including sensitive personal data such as individuals’ trade union activity.

MEDIA

Front Page Stories Don’t Necessarily Warrant Front Page Apologies

Following a publication, in breach of the Editor’s Code, which claimed that Peaches Geldof charged a fee to attend parties and implied that she provided and charged for sexual services, The Daily Star offered to publish an apology on page 2 or page 5 of its newspaper.

DOMAIN NAMES

“Foreign” Registrations

In Hit Entertainment Ltd v Robert Steinegger D2008-1753 WIPO, the World Intellectual Property Organization (WIPO) panel ordered the transfer of two .asia domain names to HIT Entertainment, in spite of it having adduced no evidence of any rights to the names in Asia.