European IP Bulletin, Issue 61

Overview


In Depth

COMMERCIAL

Consumer Remedies for Faulty Goods: Overwhelming Support for the Right to a Refund

Responses to the English Law Commission and the Scottish Law Commission joint consultation paper on consumer remedies for faulty goods have revealed widespread support for retaining the right to a refund. This right contrasts with the position under the EU Consumer Sales Directive, in which consumers’ first recourse is to repair or replacement.

DATA PROTECTION

Data Transfer: EU Guidance

The European Commission has published a series of flowcharts and FAQ’s (the Guidelines) on the transfer of personal data outside the European Economic Area in accordance with the Data Protection Directive (Directive 95/46/EC).

ENTERTAINMENT & MEDIA

Monitoring the Boundary Between House Competitions and Lotteries

The Gambling Commission has published an advice note on house competitions. The purpose is to impress upon anyone thinking of running a competition to win their house that the Commission “does not, in any circumstances, approve house competitions”.

COMMUNICATIONS & NEW MEDIA

Promoting Phone-Paid Services Through Social Networking and Other Websites

In the Compliance Corner of its April 2009 Newsplus newsletter, PhonepayPlus, the regulator for premium rate (also known as “phone-paid”) services, raises a number of compliance issues in relation to the promotion of phone-paid services through social networking and other websites.

Keywords, Sponsored Links and Trade Mark Infringement:  eBay off the Hook In the United Kingdom… For Now

In the latest instalment of L’Oréal’s pan-European campaign of litigation, the English High Court has ruled that eBay is not jointly liable for trade mark infringements committed by users listing fake goods and authentic goods imported from outside the European Union, for sale on eBay’s UK website.

E-COMMERCE, IT & BANKING TECHNOLOGY

RFID Systems and Privacy

The European Commission has produced a number of recommendations designed to address concerns over the effect of radio frequency identification (RFID) tags on privacy and personal data protection.

TRADE MARKS

Complementarity: Glassware and Wine

In Waterford Wedgwood plc v OHIM [2009] C-398/07, the European Court of Justice upheld a decision of the Court of First Instance that the complementarity between glassware and wine is insufficient to establish similarity of goods for the purposes of an opposition based on Article 8(1)(b) of the Community Trade Mark Regulation (40/94/EC).

PARALLEL IMPORTS & EXHAUSTION

Selective Distribution: Consent to Further Commercialisation

In Copad SA v Christian Dior couture SA, Société industrielle lingerie and Vincent Gladel [2008] C-59/08, the European Court of Justice has ruled that Article 8(2) of the Trade Marks Directive (89/104/EEC) can be invoked to prevent sales through discount outlets, provided that such sales damage the allure and prestige of the brand.

PATENTS

Application for Non-Infringement: Requirement to File Full Particulars

In Portasilo Ltd v Manchester Cabins Ltd BL O/119/09, the UK Intellectual Property Office has ruled that Section 71 cannot be used to launch a general attack on the validity of a patent.

UK Intellectual Property Office Tows Line on Software

In Nokia Corporation BL O/107/09, a hearing officer from the UK Intellectual Property Office has overturned the decision of one of its examiners who rejected a patent application for a software application for the networking functions enabling software development on a mobile phone. The hearing officer concluded that the application was not excluded matter, as it made a technical contribution by solving a technical problem and neither could it be characterised as a method of performing a mental act.

INTELLECTUAL PROPERTY

Preliminary Indications in Trade Mark Oppositions Registrar’s Discretion

On 11 May 2009, the UK Intellectual Property Office issued a Tribunal Practice Notice (TPN 2/2009) on opposition proceedings.

Patent Applications: Green Channel

On 12 May 2009, the UK Intellectual Property Office announced a new “Green Channel” for patents, whereby applicants can request accelerated processing for inventions relating to environmentally-friendly technologies.

DOMAIN NAMES

Consolidated UDRP Complaint Involving Multiple Complainants

Fulham Football Club (1987) Ltd, Tottenham Hotspur Public Ltd, West Ham United Football Club plc, Manchester United Ltd, The Liverpool Football Club And Athletic Grounds Ltd v Domains by Proxy Inc/Official Tickets Ltd WIPO D2009-0331 saw the first successful consolidated complaint under the Uniform Domain-Name Dispute-Resolution Policy (UDRP) involving multiple complainants and multiple domain names against a single domain name registrant, an unofficial ticket seller.