European IP Bulletin, Issue 6

Overview


HOT TOPICS

1. European Parliament Adopts Controversial Amendments to Proposed Directive on Computer Implemented Inventions

Justin Hill, a patent attorney in the London office and a Fellow of the Computer Technology Committee assess the practical implications of the European Parliament adopting controversial amendments to the proposed Directive on Computer Implemented Inventions. The amendments illustrate the extent to which the Open Source Community has succeeded in lobbying MEPs with a view to severely limiting the level of protection afforded to Computer Implemented Inventions, including software inventions.

2. European Trade Mark Protection And Unfair Competition –Views From the UK & Italy

Margherita Barié and Pietro Pouchè from McDermott Will & Emery’s Milan office and Ian Harrington, and associate in McDermott Will & Emery’s London office give their perspectives of tensions existing between trade mark protection and unfair competition which, despite harmonizing European legislation, represent one of the most significant examples of the inconsistencies in intellectual property protection across the EU Member States.

3. New EU Council Regulation To Strengthen Custom Action Against Counterfeit Goods

The European Community have adopted council regulation 1383/2003concerning customs action against goods suspected of infringing intellectual property rights.

4. Procedural Amendments For Appeals In The UK Patent Office

The UK Patent Office has, by Revised Tribunal Practice Notice TPN 1/2003 dated August 6, 2003, amended procedures relating to appeals made to the Court from decisions of the Comptroller.


COPYRIGHT

5. Deal Memos: A Burnin’ Issue?

In Confetti Records v Warner Music [2003] EWCH 1274 (Ch) the defendant needed to establish the existence of a licence for the inclusion and mixing of the garage music track ‘Burnin’ into a compilation album to avoid a claim for copyright infringement.

6. Incidental Intent?

The case between FA Premier League & Others v Panini UK Ltd [2003] EWCA Civ 995 provides trade mark owners with hope when they are unable to prove that an alleged infringer has used their mark in a trade mark sense.

7. High Court of Justice Decision in X v Nowacki

In X v Nowacki and Another, [2003] EWHC (Ch) the claimant, a wholesaler of high value ornate tableware, claimed exclusive rights to the copyright and design of the defendant’s range of china and porcelain tableware.

8. Registrability Of Designs Dictated By Their Technical Function

The UK Patent Office has, by Designs Practice Note DPN 5/03 dated 18 August 2003, explained its interpretation of Section 1C of the Registered Designs Act 1949, as amended to implement Directive 98/71/EC on the legal protection of designs.


PATENTS

9. Coflexip SA v Stolt Offshore MS

In Coflexip SA v Stolt Offshore MS ltd & Ors [2003] EWHC 1892, Stolt sought the revocation of its outstanding damages for patent infringement following the revocation of the Coflexip patent earlier this year.

10. Storage Computers v Hitachi Data Systems

In Storage Computers Ltd v Hitachi Data Systems Ltd [2003] EWCA 1155 Civ, Storage Computers appealed against their failed infringement proceedings against Hitachi over patent EP 0294287 regarding irrecoverable computer hard disk-drive errors.

11. Progress of UK Patent Amendment Bill

The Patent Office has published a Notice of Progress on their consultation on proposed changes to UK patent legislation.


TRADE MARKS

12. True. The CFI Agrees with Anheuser-Busch Over ‘Budmen’ Mark

In José Alejandro v OHIM – Anheuser-Busch, T-129/01, the Court of First Instance decided that the word sign BUDMEN couldn’t be registered as a community trade mark because of the existence of the BUD mark in Denmark, Ireland and the United Kingdom.

13. Grey Day For Stihl As CTM Appeal Rejected

In Stihl v OHMI, T-234/01, the Court of First Instance held that Stihl’s application for a Community Trade Mark of an orange rectangle above a grey rectangle was devoid of any distinctive character.

14. Can Surfers Become Elegant?

In H Young (Operations) Ltd v Medici Ltd [2003] EWHC 1589 (Ch) the question of how a trade mark specification in relation to goods that ascribes to a particular image or lifestyle should be construed is raised.

15. Exclusive Rights in Trade Marks

In Inter Lotto v Camelot Group Plc [2003] EWHC 1256 (Ch) and Inter Lotto (UK) Ltd v Camelot Group Plc [2003] EWCA Civ 1132 exclusive rights to the mark ‘HOT PICKS’ was contested.

16. Timetable for Trade Mark Refusals Tightened

In Practice Amendment Notice 2/03, The UK Trade Marks Registry has announced that applicants will be given only 3 months instead of 6 months to respond to most official objections.

17. EU Pushing for Tougher Rules to Protect Geographical Indications

Within the framework of the Doha Round, the EU has proposed a three-step process to improve the way in which geographical indications are protected.


ACKNOWLEDGEMENTS

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:

Alison Firth, Afe Komolafe, Malcolm Langley, Florian Leverve, James Mitchiner, Aditya Nagarsheth, Mike Rhys-Thomas and Daphne Zografos.