European IP Bulletin – Issue 67


In Depth


IPO Drops Proposals for Format Shifting and Parody Exceptions
As part of a consultation process, the United Kingdom Intellectual Property Office has published Taking forward the Gowers Review of Intellectual Property: Second stage consultation on copyright exceptions. The document is notable more for what it does not take forward than for what it does.

European and EU Patents Court and The EU Patent
The Council of the European Union has released its Conclusions on an enhanced patent system in Europe as part of ongoing efforts towards a unified European patent system. A number of obstacles to the establishment of such a system still remain.


Allegedly Libellous Comments on Bulletin Boards: The Hosting Defence
In Imran Karim v Newsquest Media Group Ltd [2009] EWHC 3205 (QB) Mr Justice Eady granted an application to strike out a libel claim brought by an ex-solicitor against Newsquest. He held that an article published online was absolutely privileged as a fair, accurate and contemporaneous report of legal proceedings and that Newsquest also had a defence based on the hosting safe harbour in the E-commerce Regulations in relation to user comments posted to bulletin boards on the website.


Ainsworth Strikes Back: U.S. Copyright Not Directly Enforceable in the United Kingdom
In Lucasfilm Ltd v Ainsworth [2009] EWCA Civ 1328, the Court of Appeal of England and Wales ruled that claims under U.S. copyright law cannot be determined by an English court, thereby reversing a decision of the High Court.


Colour Marks: Evidence of Acquired Distinctiveness
In Andreas Stihl AG & Co KG R 355/2007-4, the Board of Appeal at The Office of Harmonization for the Internal Market confirmed the examiner’s decision that the colour mark was not inherently distinctive but held that the mark had acquired distinctive character under Article 7(3), taking into account the Applicant’s evidence, including two market surveys.

Identical Goods but Low Degree of Similarity Between Signs
In Peek & Cloppenburg v OHIM [2009] T-386/07, the Court of First Instance (renamed the General Court when the Treaty of Lisbon entered into force on 1 December 2009) has overturned a decision of the Second Board of Appeal of The Office of Harmonization for the Internal Market that rejected an opposition finding no likelihood of confusion between the stylised mark AGILE and the earlier Community trade mark, AYGILL’S, registered for the same goods.

CANNABIS Descriptive of Beer?
In Giampietro Torresan v OHIM [2009] T 234/06 (unreported), the Court of First Instance (renamed the General Court when the Treaty of Lisbon entered into force on 1 December 2009) upheld a declaration made by the Second Board of Appeal of The Office of Harmonization for the Internal Market that the registration of CANNABIS as a Community trade mark for beer was descriptive.

Pending Opposition and Admissibility of Revocation Proceedings
In Stella Kunstofftechnik GmbH v OHIM [2009] T-27/09 (unreported), the General Court (formerly the Court of First Instance) held that the revocation proceedings of The Office of Harmonization for the Internal Market, which were based on an earlier mark, were not inadmissible simply because the earlier mark was being opposed.


Failure to Prove Exhaustion of Trade Mark Rights
In Sun Microsystems Inc v M-Tech Data Ltd [2009] EWHC 2992 (Pat), Mr Justice Kitchin held that Sun Microsystems Inc was entitled to summary judgment in respect of the parallel import of computer equipment by M-Tech Data Ltd, rejecting M-Tech’s defences that the products were first put on the market within the European Economic Area by Sun and that Sun’s exploitation of its marks were contrary to European Community competition law.


Employee Compensation: The Hypothetical Transaction
In Ian Alexander Shanks v Unilever plc [2009] EWHC 3164 (Ch), Mr Justice Mann held that the hypothetical transaction contemplated in Section 41(2) of the Patents Act 1977 in calculating compensation due to an employee to compensate him for making an invention of outstanding benefit to his employer, should be between the employer and an arm’s length buyer and not a party with all the same attributes as the actual buyer, minus its connection to the inventor’s employer.


Broadcast Sponsorship: The Distinction from Advertising
Issue 146 of the Ofcom Broadcast Bulletin (23 November 2009) published findings from the Office of Communications’ monitoring of sponsorship credits. The monitoring was conducted following an apparent increase in the amount of information about sponsors’ products/services included in some sponsorship credits.


Vulnerability of Insufficiently Well Known Trade Marks
In Office Holdings Ltd v Hocu To d.o.o. and Office Shoes d.o.o. [2009] D2009-1277 WIPO, it was concluded that a proprietor of trade marks in central and eastern Europe had a legitimate interest in a corresponding domain name, even though it was apparent that the trade marks and domain name had been chosen in order to mimic an earlier trade mark registered elsewhere in Europe.


The Alcohol Industry Advertising and Sponsorship
On 8 January 2010, the House of Commons Health Committeepublished a cross party Report on alcohol, addressing concerns over the rising level in recent years of alcohol consumption and its consequences. The overall position of the Report is that the current system of controls on alcohol advertising and promotion is failing the young people it is intended to protect.