European IP Bulletin, Issue 60

Overview


In Depth

ADVERTISING & MARKETING

Office of Fair Trading’s Quick Guide: Business-to-Business Promotions and Comparative Advertisements

The Office of Fair Trading’s “quick guide” tells us nothing we don’t already know about the Business Protection from Misleading Marketing Regulations 2008. However, it is worth a look if only to confirm the regulator’s approach to their enforcement.

COMMUNICATIONS & NEW MEDIA

Retention of Internet Communications Data

The Data Retention (EC Directive) Regulations 2009 came into force on 6 April 2009, transposing into UK law the internet data requirements of the Data Retention Directive (2006/24/EC).

Privacy, Profiling and Targeting

The European Consumer Commissioner, Meglena Kuneva, delivered a message to online service providers that “the current situation with regard to privacy, profiling and targeting is not satisfactory”.

Trade Mark Infringement and Those Links “At the Top of the Search Results”

In Rescuecom Corp v Google Inc [2009] (U.S. Court of Appeals for the Second Circuit), the U.S. Court of Appeals for the Second Circuit overruled a district court decision that Google’s sale of third party trade marks as keywords does not amount to use in commerce for the purposes of trade mark infringement under the Lanham Act.

SPORT

Department for Culture, Media and Sport Launches a Public Consultation on the Designation of Major National Events

The Free-to-air Events Review Consultation seeks views on three main areas: the principle of having a list; the criteria against which events might be listed; and the content of the list itself, including whether any non-sporting events meet the criteria.

COMMERCIAL

The Courts’ Reluctance to Declare Unclear Contract Terms Void

In Anglo Continental Educational Group (GB) Ltd v Capital Homes (Southern) Ltd [2009] EWCA Civ 218 the English Court of Appeal has ruled that where neither party’s interpretation of a clause provides a satisfactory solution, the Court prefers an interpretation that makes the clause effective over an interpretation that results in the clause being void.

DATA PROTECTION

Financial Fraud: Data Transfer “Necessary for Reasons of Substantial Public Interest”

In Bernard L Madoff Investment Securities LLC [2009] EWHC 442 (Ch), an application was granted for the transfer of personal data in the possession of the joint provisional liquidators of a UK subsidiary to the trustee in bankruptcy of its parent company in the United States on the basis that it was necessary for reasons of substantial public interest.

TRADE MARKS

Budvar of Attrition

In Anheuser-Busch Inc v OHIM T-191/07, the European Court of First Instance upheld a decision of the Office for Harmonisation in the Internal Market (OHIM) Board of Appeal preventing Anheuser-Busch from obtaining a Community Trade Mark for BUDWEISER.

A Community Trade Mark Application Cannot be Implicitly Withdrawn

In Laytoncrest Ltd v OHIM T-171/06 (unreported), the Court of First Instance held that withdrawal of a trade mark application must be express and unequivocal.

Community Trade Mark Oppositions based on National SPA Marks

In L’Oréal SA v OHIM T-21/07 and L’Oréal SA v OHIM T-109/07 L’Oréal was prevented from registering SPALINE and SPA THERAPY as Community Trade Marks for cosmetic products.

NAKED Appeal

In Creative Resources LLC’s Application (No 300765009) (Court of First Instance, Hong Kong High Court [2009]), the Hong Kong High Court overturned the decision of the Trade Marks Registry that the word NAKED was descriptive for condoms.

Landmark Victory for eBay in Trade Mark Infringement Case

The Tribunal de Grande Instance de Paris (Paris first instance civil court) has ruled that eBay was not liable for selling on its website counterfeit products and luxury goods imported from outside the European Union.

PATENTS

Infringement and Added Matter

In Napp Pharmaceutical Holdings Ltd v ratiopharm GmbH; Napp Pharmaceutical Holdings Ltd v Sandoz Ltd [2009] EWCA Civ 252, on appeal from an English High Court ruling that two patents were valid but not infringed, the Court of Appeal determined that both patents were valid and infringed.

Process Patents—Slowing Down the Competition

In Scinopharm Taiwan Ltd v Eli Lilly & Company [2009] EWHC 631 (Pat), the English High Court rejected an attack on the obviousness of a process patent based on reading two prior art publications in combination. The Court held that it was only permissible to read two documents together if it was obvious to do so.

DOMAIN NAMES

The Problem with Parking Sites

In Oasis Stores Ltd v J Dale [2009] DRS 06365, a Nominet Appeal Panel allowed the Respondent’s appeal against an expert’s decision, transferring the domain name oasis.co.uk to the clothing retailer.

COPYRIGHT

Three Strikes and You’re Out in France

President Sarkozy’s government has finally been able to force through a controversial “three strikes” law against illegal file sharing