European IP Bulletin, Issue 63

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Overview


In Depth

ADVERTISING & MARKETING

Film and Video: Implementing Byron Review Recommendations

The Committee of Advertising Practice and the Broadcast Committee of Advertising Practice have issued Guidance on Advertisements for Video Games and Films in line with the recommendations made in the Byron Review.

DATA PROTECTION

Trade Union Blacklists: Ian Kerr Fined and Draft Regulations Published

Ian Kerr, the man behind the company that maintained a blacklist which allowed prospective employers in the construction industry to discriminate against trade union activists, has been fined £5,000 for breach of the Data Protection Act 1998. In addition, the Department for Business Innovation & Skills has published a consultation paper setting out the Government’s proposals to introduce new regulations outlawing the compilation, dissemination and use of trade union blacklists.

COMMUNICATIONS & NEW MEDIA

Privacy Impact Assessments after Phorm

The UK Information Commissioner’s Office has published an updated handbook for Privacy Impact Assessments. The original version of the PIA Handbook was published as a response to the loss by HM Revenue & Customs in October 2007 of two CD-ROMs containing 25 million data subjects’ unencrypted personal data.

COMMERCIAL

EU Consumer Rights Reform and UK Policy

The Department for Business Innovation & Skills has published the UK Government Response to the consultation document on EU proposals for a Consumer Rights Directive. While the Government welcomes reform of the EU consumer protection framework, it makes clear that there are key proposals that it will resist vehemently as they will erode significantly rights and protections for the UK consumer.

UK Definition of Commercial Agent

In Sagal (trading as Bunz UK) v Atelier Bunz GmbH [2009] EWCA Civ 700, the Court of Appeal of England and Wales has confirmed that the Commercial Agents Directive 86/653/EEC applies only to agents who bring their principals into direct contractual relationship with their customers. It does not apply to agents who make their own contracts with their customers.

Unfair Terms in UK Consumer Contracts

In The Office of Fair Trading v Foxtons Ltd [2009] EWHC 1681 (Ch) Mr Justice Mann ruled that the ongoing commission clauses in Foxtons’ standard form lettings contract breached the Unfair Terms in Consumer Contracts Regulations 1999. The judge also ruled that a term charging further commission on the sale of the property to a tenant was unfair.

COPYRIGHT

Statutory Damages: Foreign Works and the U.S. Live Broadcast Exemption

In a class action led by the Football Association Premier League (FAPL) and U.S. music publishers Bourne against YouTube and its owners Google, a U.S. District Court judge held that, because the FAPL did not register its broadcasts of Premier League matches with the U.S. Copyright Office, it cannot claim statutory damages under the U.S. Copyright Act against YouTube in respect of allegedly copyright infringing material uploaded by users to the video sharing site. The only circumstances in which a claim would have been possible are that, only in relation to live broadcasts, the FAPL gave YouTube 48 hours notice of potential infringement.

DESIGNS

Commissioned Community Design: Ownership

In Fundación Española para la Innovación de la Artesanía v Cul de Sac Espacio Creativo SL and Acierta Product & Position SA C 32/08 2 July 2009 (unreported), the European Court of Justice has ruled that a person who commissions a design does not acquire the rights in it by virtue of the commission and that those rights remain with the designer unless they are assigned by contract.

COUNTERFEITING & PIRACY

EU Customs Action: International Marks

In Zino Davidoff SA v Bundesfinanzdirektion Südost C-302/08 2 July 2009 (unreported), the European Court of Justice has ruled that a Madrid Protocol mark designating the Community has the same effect as a Community trade mark for the purposes of Article 5(4) of the Customs Regulation (1383/2003/EC).

CONFIDENTIALITY

Necessary Quality of Confidence

In JN Dairies Ltd v Johal Dairies Ltd [2009] EWHC 1331 (Ch) HHJ David Cooke held that information contained in invoices stolen from the Claimant’s warehouse had the necessary quality of confidence for the Claimant to bring an action against its competitor.

TRADE MARKS

Film Titles: Passing Off and Well Known Marks

In BL O-173-09 Fabergé Ltd’s application (Danjaq LLC’s opposition), a hearing officer of the UK Intellectual Property Office rejected an opposition brought by Danjaq LLC, the owners of the rights in the Bond films, against Fabergé’s application to register FROM RUSSIA WITH LOVE in relation to watches and jewellery.

Film Titles: Trade Mark Function

In Danjaq LLC v OHIM T-435/05, the Court of First Instance upheld a decision of the Board of Appeal of the Office of Harmonization for the Internal Market (OHIM) that a film title is an indicator of artistic, but not commercial origin and, as such, is not a trade mark.

Technical Marks: “Relevant Public”

In ERNI Electronics GmbH v OHIM T-132/08, the Court of First Instance upheld a decision of the Fourth Board of Appeal of the Office of Harmonization for the Internal Market (OHIM) that the word mark MAXIBRIDGE could not be registered as a trade mark for electrical connectors, on the basis that the mark was descriptive and lacked distinctive character.

PATENTS

Court of Appeal Upholds SPC on Enantiomer of Known Racemate

In Generics (UK) Ltd v Daiichi Pharmaceutical Co Ltd [2009] EWCA Civ 646, the Court of Appeal of England and Wales upheld a decision of the Patents Court confirming the validity of a patent and accompanying supplementary protection certificate (SPC) to an enantiomer of a known racemate.

Obviousness: Commercial Success

In Aerotel Ltd v Wavecrest Group Enterprises Ltd [2009] EWCA Civ 408, the Court of Appeal of England and Wales dismissed an appeal from a decision at the High Court that the patent was rendered obvious. The judge also held that claimed commercial success was of very little importance and could not save the patent.

Scope of Know-How and Patent Rights Licences in the United Kingdom

In Oxonica Energy Ltd v Neuftec Ltd [2009] EWCA Civ 668, it was found that a licensee under a patent and know-how licence could not use the licensed know-how disclosed to it to develop and sell products outside the jurisdiction of the licence, without incurring liability to pay royalties to the licensor.

ENTERTAINMENT & MEDIA

Privacy: UK Press Use of Material Posted on Social Networking Sites

The UK Press Complaints Commission has upheld a complaint regarding the use by newspapers of material that has been uploaded by members of the public on social networking sites.

DOMAIN NAMES

Parody, Political Speech and Bad Faith

In Sutherland Institute v Continuative LLC WIPO D2009-0693 (10 July 2009), sole World Intellectual Property Organization (WIPO) panellist Frederick M Abbott refused to find bad faith in the use by a group of gay activists of a domain name identical to the service mark of a “conservative think tank” on a parody site.