European IP Bulletin – Issue 74

Overview


In Depth

COPYRIGHT

Robin Meakin v BBC: Television Programme Proposals, Format Rights and Conspiracy Theories

In a UK copyright case concerning TV game-show formats, Arnold J granted the Defendants summary judgment and provided an overview of the approach the court will take in relation to the protection of TV formats. Essentially, the question was whether there was derivation—assessed on the basis of any similarities with and access to Mr Meakin’s proposals—and whether there was reproduction of a substantial part thereof. The court concluded that there was neither.

TRADE MARKS 

Companhia Muller de Bebidas v The Office of Harmonization for the Internal Market: Numerical Elements and Likelihood of Confusion

Following a detailed analysis of the distinctive and dominant elements of the Applicant’s figurative mark “61 a nossa alegria” and a number of the Opponent’s earlier trade marks incorporating the words “cachaça 51”, the General Court overruled a decision of the Board of Appeal of the Office The Office of Harmonization for the Internal Market in finding some visual, conceptual and phonetic similarities between the numbers “51” and “61”. Despite rather different figurative elements, taking into account the identity of the goods to which the marks related, the Court held that there was a real likelihood of confusion between the marks.

Lego Juris A/S v The Office of Harmonization for the Internal Market: Three-Dimensional Mark and “Essential Characteristics Which Perform a Technical Result”

Confirming that a shape cannot be registered as a trade mark if all of its essential characteristics merely perform a technical function, the European Court of Justice held that Lego’s iconic three-dimensional trade mark for a red Lego brick was invalid under Article 7(1)(e)(ii) of Community Trade Mark Regulation 40/94 EEC (now 207/2009/EC) because its shape is necessary to obtain a technical result.

PARALLEL IMPORTS

Oracle America Inc (formerly Sun Microsystems Inc) v M-Tech Data Ltd: “Euro-Defences” at Least Arguable

The Court of Appeal has overturned Mr Justice Kitchin’s decision to grant summary judgment to Oracle America Inc in respect of its claim for registered trade mark infringement in relation to certain parallel imports made by M-Tech Data Ltd.

COMMUNICATIONS AND NEW MEDIA

BIS Consultation on Implementing the Revised EU Electronic Communications Framework

The UK Department for Business Innovation and Skills has launched a consultation on its proposals for implementing the revised EU Electronic Communications Framework.

Online Infringement of Copyright Cost Sharing: UK Government Decision

Internet service providers will share 25 per cent of the costs of running the new anti-piracy notification scheme under the Digital Economy Act, with copyright holders bearing the remaining 75 per cent.

E-COMMERCE, IT AND BANKING TECHNOLOGY

European Commission Consultation on the Future of Electronic Commerce 

The European Commission has launched a public consultation on the future of electronic commerce in the internal market and the implementation of the Directive on electronic commerce (2000/31/EC) aimed at identifying obstacles to the development of e-commerce and evaluating the impact of the E-commerce Directive. Taking into account the responses received, the Commission intends to issue a Communication on e-commerce in the first half of 2011

ENTERTAINMENT AND MEDIA

Experience Hendrix Llc v Times Newspapers Ltd: Damages and The IP Enforcement Directive

Damages have been awarded to Experience Hendrix Ltd under the IP Enforcement Directive (2004/48/EC) in respect of a covermounted CD on the Sunday Times newspaper containing bootlegged recordings of Jimi Hendrix’s last concert. Damages were based upon loss suffered on a worldwide basis.

LEGAL PROFESSIONAL PRIVILEGE

Akzo Nobel Chemicals Ltd v European Commission: Exchanges Between In-House Lawyers and Their Employers

The European Court of Justice has dismissed an appeal by Akzo Nobel Chemicals Ltd and Akcros Chemicals Ltd against the decision of the General Court in 2007 that advice given by an in-house lawyer is not protected by legal privilege in EU competition cases.