European IP Bulletin – Issue 68

Overview


In Depth

DATA PROTECTION

Information Commissioner’s Office Threatens Tougher Sanctions for Failure to Report Security Breaches

The Data Protection Act 1998 imposes eight principles on those controlling the processing of personal data in the United Kingdom.

Outsourcing: Standard Controller-to-Processor Contractual Clauses

The European Commission has adopted a Decision updating the standard contractual clauses for the transfer of personal data by data controllers to data processors established in third countries. The new clauses contain specific provisions to allow, under certain conditions, the outsourcing of processing activities to non-EU sub-processors.

ENTERTAINMENT AND MEDIA

Product Placement: Alcohol and HFSS Foods off the Menu

In a Statement on product placement policy it was confirmed that the UK Government intends to introduce regulations allowing limited product placement in programmes made in the United Kingdom. The new regulations will blacklist certain products, however, including foods high in fat, salt or sugar (HFSS) and alcohol.

INTELLECTUAL PROPERTY

Company Names Tribunal: “Without Prejudice” Not Decisive

The United Kingdom’s Company Names Tribunal has issued Practice Note 01/10 on the use of “without prejudice” material, reminding practitioners that “without prejudice” material is inadmissible in proceedings before the tribunal.

COUNTERFEITING AND PIRACY

Counterfeit Goods “Abandoned for Destruction”

The United Kingdom’s Goods Infringing Intellectual Property Rights (Customs) (Amendment) Regulations 2010 simplify the procedure for the destruction of infringing goods intercepted by Customs.

COMMUNICATIONS AND NEW MEDIA

Safer Social Networking: “More Needs To Be Done To Protect Children Online”

The European Commission has released an evaluation report on the implementation of the Safer Social Networking Principles for the European Union.

E-COMMERCE, IT AND BANKING TECHNOLOGY

Business-To-Consumer Contracts Under Scrutiny

The Office of Fair Trading launched a market study into consumer contracts on 4 February 2010. The study will examine when, how and why contracts may cause difficulties for consumers and will take into account developments such as the increasing number of contracts entered into online.

COMMERCIAL

Indemnities and the Meaning of “Subsidiary”

In Enviroco Ltd v Farstad Supply A/S [2009] EWCA Civ 1399, the entitlement of Enviroco as an alleged “affiliate” of Asco UK Ltd, to rely on an indemnity in a charterparty against claims brought by the shipowner, Farstad, was disputed.

Incorporation of Terms By Reference

In Habaş Sinai ve Tibbi Gazlar Isthisal Endǖstri AŞ v Sometal SAL [2010] EWHC 29 (Comm), Mr Justice Clarke held that general words of incorporation were capable of incorporating contractual terms that included an arbitration clause, without referring specifically to it.

TRADE MARKS

Assessing Similarity of Single Word and Composite Word Marks

In Enercon GmbH v OHIM T-472/07, the General Court (formerly the Court of First Instance) confirmed the decision of the Board of Appeal of The Office of Harmonization for the Internal Market (OHIM), upholding an opposition based on TRANSFORMERS ENERGON against the registration of the sign ENERCON.

Conceptual Differences Between Marks

In G-Star Raw Denim kft v The Office of Harmonization for the Internal Market T-309/08, the General Court (formerly the Court of First Instance) held that Article 8(5) of the Community Trade Mark Regulation (40/94/EC) did not apply to prevent registration of the figurative mark G STOR, because the visual and conceptual differences between it and the earlier G‑STAR marks prevented the establishment of any link between them.

Likelihood of Confusion: Coexistence of Earlier Marks

In Nokia OYJ v The Office of Harmonization for the Internal Market T-460/07, the General Court (formerly the Court of First Instance) held that there exists a likelihood of confusion between the word mark LIFE, registered for goods and services in Classes 9, 38 and 41, and Nokia’s word mark LIFE BLOG, applied for in respect of various goods and services in the same Classes. The Court found that the overall impression made by the marks was liable to give rise to a similarity sufficient to cause a likelihood of confusion.

PASSING OFF

“Extended Passing Off”

In Diageo North America Inc v Intercontinental Brands (ICB) Ltd [2010] EWHC 17 (Ch), Mr Justice Arnold held that “vodka” is a term that is capable of distinguishing a particular class and quality of product. In branding a vodka-blend as “VODKAT” and marketing it in a manner that did not make clear to the public that this was not vodka, the judge held Intercontinental Brands (ICB) Ltd was liable for passing off.

PATENTS

Parallel Proceedings: Application to Stay and Identity of Parties

In Mölnlycke Health Care AB v BSN Medical Ltd [2009] EWHC 3370, Mr Justice Floyd rejected an application by BSN Medical Ltd to stay proceedings brought by Mölnlycke Health Care AB (MAB) and its exclusive United Kingdom licensee Mölnlycke Health Care Ltd (MUK) to await a determination of co-pending proceedings in the Stockholm District Court. The judge held that the interests of a licensor and licensee were different sufficiently for them not to qualify as identical parties for the purposes of Article 27(1) of the Brussels Regulation (44/01/EC).

GSM Recommendations: Obviousness

In Nokia GmbH v IPCom GmbH & Co KG; IPCom GmbH v Nokia UK Ltd[2009] EWHC 3482 (Pat), Mr Justice Floyd considered the prior art and common general knowledge of skilled persons in the field of developing mobile phones for the use in the global system for mobile communications (GSM). The judge concluded that the patents were invalid for obviousness in light of the GSM recommendations.

DOMAIN NAMES

Transfer of Over 1500 Domain Names

In Inter-Continental Hotels Corporation, Six Continents Hotels v Daniel Kirchhof D2009-1661 WIPO, a Uniform Domain-Name Dispute-Resolution Policy panellist ordered the transfer of over 1500 domain names from an individual registrant, to Six Continents.