European IP Bulletin – Issue 75

Overview


In Depth

INTELLECTUAL PROPERTY (GENERAL)

IPO Consultation: Setting The Limit on The Value of Claims Heard in The UK Patents County Court

The UK Intellectual Property Office (IPO) has launched a consultation, which closes on 3 December 2010, to determine whether a cap of £500,000 should be put on the value of claims to be heard at the Patents County Court.

PATENTS

Persons Skilled in the Art: Obviousness and Sufficiency

Reversing a High Court decision on the invalidity of two patents Lord Justice Jacob has held that the person skilled in the art can differ, depending on whether the test is used to determine obviousness or in relation to sufficiency and claim interpretation.

Tate & Lyle Technology Ltd v Roquette Freres: Claim Construction Destroys Novelty

The Court of Appeal of England and Wales has held that, on the basis of the facts presented, the construction of a patent claim destroyed its novelty.

Grimme Maschinenfabrik GmbH & Co KG v Derek Scott (t/a Scotts Potato Machinery): Contributory Infringement and “Means Essential”

The Court of Appeal of England and Wales has held that the supply of an entire and non-infringing machine, which could be modified by the removal of a part and substitution of another part so as to infringe a patent, constituted contributory infringement under Section 60(2) of the Patents Act 1977

COPYRIGHT

Harry Potter v Willy the Wizard

In Paul Gregory Allen (acting as trustee of Adrian Jacobs (deceased)) v Bloomsbury Publishing plc [2010] EWHC 2560 (Ch)  Mr Justice Kitchin denied a summary judgment application against claims that Harry Potter and the Goblet of Fire infringed the copyright in Willy the Wizard.

TRADE MARKS

Socks World International Ltd and Beko Plc: Intention and Unfair Advantage

Taking into account the judgment of the European Court of Justice in L’Oréal v Bellure C-487/07, Daniel Alexander QC overturned the hearing officer’s decision rejecting an opposition by Beko against Socks World’s application for the stylised trade mark BEKO SPORT, finding that use in the United Kingdom of the mark would take unfair advantage of the distinctive character or repute of Beko’s earlier BEKO mark under Section 5(3) of the Trade Marks Act 1994.

DHL Express (France) v Chronopost SA (Opinion of Advocate General Pedro Cruz Villalón): Injunction Effective Throughout the European Union

On a reference to the European Court of Justice for a preliminary ruling from the Cour de Cassation in France in DHL Express (France) v Chronopost SA [2010] C-235/09, Advocate General Pedro Cruz Villalón has opined that an injunction prohibiting an infringer of a Community Trade Mark from continuing to infringe has effect throughout the whole of the European Union.

DESIGNS

Dyson Ltd v Vax Ltd: Overall Impression, Design Corpus and Design Freedom

Mr Justice Arnold held that Vax Ltd had not infringed a UK registered design—owned by Dyson Ltd in relation to the latter’s Dual Cyclone vacuum cleaner—by importing and marketing the Mach Zen C-91 MZ vacuum cleaner. Although there were some similarities between the designs, there were also some significant differences, making the overall impression produced by the two designs different.

DATABASES

Beechwood House Publishing Ltd v Guardian Products Ltd: Sui Generis Right and Extraction of Substantial Part

An application for summary judgment with respect to a claim for database right infringement was dismissed on the grounds that the applicant Claimant had failed to show that the Defendant had extracted a substantial part of its database.

COMMERCIAL

European Parliament’s Committee on the Internal Market and Consumer Protection Briefing Paper on the Proposed Consumer Rights Directive: Disharmony Over Full Harmonisation

The Briefing Paper analyses a number of different models of harmonisation and the impact of full harmonisation on Member States’ substantive laws and on the workload of the European Court of Justice.

Gary Fearns (trading as Autopaint International) v Anglo-Dutch Paint & Chemical Ltd: Operative Date for Set-Off of Damages in Different Currencies

The date when the Claimant’s damages and the sum he owed to one of the Defendants was to be converted into a common currency and set off to derive a net liability, was the date of final determination of liabilities (i.e., the date of judgment), not the date the claim arose.

Oceanbulk Shipping & Trading SA v TMT Asia Ltd: Without Prejudice Negotiations and The Interpretation Exception

The Supreme Court of the United Kingdom has reversed a decision of the Court of Appeal of England and Wales and added a further exception to the general inadmissability of without privilege communications—the “interpretation exception”—which brings without prejudice negotiations in line with the approach to pre-contract negotiations.

DATA PROTECTION

Information Commissioner’s Office Data Sharing Code of Practice Consultation: Draft Code on Lawful and Effective Data Sharing

On 7 October 2010, the Information Commissioner’s Office (ICO) published a draft statutory Code of conduct for the sharing of personal data under its powers under Sections 52A and 52D of the Data Protection Act 1998. The ICO is conducting a consultation on the content of the proposed Code. The Code will have statutory effect and, whilst it does not impose additional legal obligations and is not intended to be an authoritative statement of the law, it is designed to be used in evidence in legal proceedings and this is not limited to proceedings under the Data Protection Act.

SPORT

Giedo Van der Garde BV v Force India Formula One Team Ltd: Breach of Service Agreement, Restitution and “Wrotham Park” Damages

In a detailed judgment, Mr Justice Stadlen has found that Force India Formula One Team Ltd was in breach of its contract with Formula One aspirant Giedo Van der Garde by not providing him with the minimum number of driving kilometres for which Mr Van der Garde had paid US$3 million in the hope of gaining enough experience to win a Formula One driving seat. Undertaking a thorough review of the law of restitution and total failure of consideration, Stadlen J held that restitution did not apply as the failure of consideration had not been total.

Olympics, Paralympics and London Olympics Association Rights: Remedies for Infringement

Regulations, which take effect from 8 November 2010, have been published setting out the orders a court can make to protect the right of association with the London Olympics.