European IP Bulletin, Issue 84

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Overview


In Depth

TRADE MARKS

“The War of the Roses”:  Proportionality and Use in Accordance With Honest Practices

Samuel Smith Old Brewery v Philip Lee (t/a Cropton Brewery) [2011] EWHC 1879 (Ch) concerns two breweries, Yorkshire pride, and a lost sense of proportionality. Although Cropton Brewery was found liable for trade mark infringement, notably, Arnold J made no award for damages.

Registrability of Marks Containing Geographical Indications of Origin

“Cognac” as a geographical indication (GI) cannot be used in a trade mark of a spirit drink not covered by that GI, as the commercial use of such a mark would harm the protected indication.

CJEU Considers Effect of Honest Concurrent Use in BUDWEISER Reference

In Budějovický Budvar, národní podnik v Anheuser-Busch, Inc, C-482/09 (22 September 2011), the Court of Justice of the European Union (CJEU) ruled that both Anheuser-Busch and Budvar can continue to use the BUDWEISER trade mark in the United Kingdom as there had been a long period of honest concurrent use. The CJEU found that Budvar’s use of its registered mark did not have any adverse effect on Anheuser-Busch’s registration, which was a prerequisite for granting a declaration of invalidity under Article 4(1)(a) of the Community Trade Mark Directive (89/104/EEC, now replaced by 2008/95/EC).

Further CJEU Guidance On Keyword Advertising And Trade Mark Infringement

In (1) Interflora Inc. (2) Interflora British Unit v (1) Marks & Spencer plc (2) Flowers Direct Online Ltd, Case C-323/09 (22 September 2011), the Court of Justice of the European Union has provided further guidance on circumstances in which use of a registered trade mark as a keyword by a third party advertiser may constitute trade mark infringement.

COPYRIGHT AND LICENSING:

Territorial Exclusivity of Football Broadcasts Found Contrary to EU Law

The Court of Justice of the European Union has ruled in Football Association Premier League Ltd v QC Leisure C-403/08 and Karen Murphy v Media Protection Services Ltd C-429/08 (4 October 2011) that a system of licences for the broadcasting of sporting events which grants licensees territorial exclusivity on a Member State basis, and which prohibits television viewers from watching the broadcasts in one Member State using a decoder licensed for use in another, is contrary to EU law.

EU Enhances Copyright Protection for Sound Recordings and Songs

On 12 September 2011, Directive 2011 / 77 / EU, amending Directive 2006 / 116 / EC on the term of protection of copyright and certain related rights (the Directive) was adopted. The Directive extends the term of copyright protection for performers and sound recordings from 50 to 70 years.

REGISTERED COMMUNITY DESIGN RIGHT:

The European General Court Decides Only Visible Parts Determine Overall Impression

In Kwang Yang Motor Co Ltd v OHIM Cases T-10/08 and T-11/08 9 September 2011 (unreported) the European General Court held that a design that constituted a component part of a complex product could only be considered to have individual character if the component part remained visible during normal use and fulfilled the requirements as to novelty and individual character.

DATABASE

Sui Generis Database Rights and What Constitutes a Substantial Part

In Beechwood House Publishing v Guardian Products Ltd [2011] EWPCC 22, the Claimant’s database right was found to have been infringed when the Defendants extracted 6,000 records from the Claimant’s database of 43,000 records. Additionally, the judge found that a subsequent mass-mailing exercise also amounted to infringement as each extraction was systematic.

DATA PROTECTION:

How The Cookie Crumbles: A Clash of Cultures on Cookie Regulation

The Article 29 Working Party has met with Internet Advertising Bureau Europe and European Advertising Standards Alliance representatives to tell them in no uncertain terms that their otherwise well-received Best Practice Recommendation and Framework on Online Behavioural Advertising does not comply with the revised e-Privacy Directive provisions on cookies.