European IP Bulletin, Issue 9

Overview


NTELLECTUAL PROPERTY

1. INTELLECTUAL PROPERTY RIGHTS IN SPORT: VICTORIES FOR COLE AND BEDFORD

The cases of Joe Cole and David Bedford illustrate the growing awareness and need felt by sports personalities to protect their image, goodwill or popularity from unauthorised commercial use and exploitation. These cases underline the use of intellectual property rights to protect legitimate interests in the absence of specific personality or image rights in UK.


COPYRIGHT

2. THE MUSIC INDUSTRY TAKES ACTION AGAINST PARALLEL IMPORTS

The British Phonographic Industry is taking action against online retailers selling CDs sourced outside the European Economic Area. In January it reached a favourable settlement with CD WOW!, an online CD retailer, over parallel imports.

3. GOOGLE DEMANDS BOOBLE CHANGE ITS NAME

The most popular Internet search-engine, Google, which accounts for more than 70% of the global search engine market, has demanded the new adult Internet search-engine Booble change its name and refrain permanently from using a variation of Google’s name.

4. NELLIE THE ELEPHANT PART 1

The UK Trade Marks Registry has rejected an application by Dash Music to declare invalid the “Nellie the Elephant” trade mark even though they own the copyright to the well known children’s song.


PATENTS

5. NEW PATENTS BILL INTRODUCED INTO THE HOUSE OF LORDS

A Patents Bill has been introduced by Lord Sainsbury, the Minister for Science and Innovation, to bring the Patents Act 1977 into line with recent changes to the European Patent Convention. It will be called the Patent Act 2004 but will only amend the Act. The Bill results from a consultation procedure in 2003 by the UK Patent Office, but some of the drafting does not reflect that envisaged by the UKPO.

6. EUROPEAN COMMISSION PROPOSES COMMUNITY PATENT COURT

The EC has finally presented its proposals for establishing the Community Patent Court, which will have exclusive jurisdiction in dealing with the issues of infringement and validity of Community Patents. This will ensure enhanced legal certainty and harmonisation of patent law and procedures, while avoiding much of the expenses and inconvenience for future applicants seeking patent protection in EU.


TRADE MARKS

7. NELLIE THE ELEPHANT PART 2

At the second time of asking, the UK Trade Marks Registry has revoked the “Nellie the Elephant” Trade Mark on the basis of “non-use”.

8. NICHOLS PLC V REGISTRAR OF TRADE MARKS

The UK trade marks registry has a long standing practice of accepting rare surnames as trade marks but refusing registration to those which are common surnames. This case considers whether or not this practice complies with the Trade Mark Directive 89/104/EC requirement that surnames be treated as any other type of mark.

9. THE MINT HAS A HOLE – THE CASE HAS A HOLE

In Mars UK Ltd v Societe des Produits Nestlé SA the question arose as to the scope of permissible amendments to a trade mark application. Nestlé, having earlier in the year been refused “Have a Break” by the Court of Appeal, although subject to a reference to the ECJ, were chancing their arm by seeking to register a graphical or three dimensional trade mark, the shape of the well known Polo mint but without the word “Polo” on it.


ACKNOWLEDGEMENTS

McDermott, Will & Emery would like to acknowledge the invaluable contribution to the Bulletin made by Lucas Arrivillaga, Afegieme Komolafe, Malcolm Langley, James Mitchiner, Rajesh Sagar, Ilanah Simon and Daphne Zografos from the Queen Mary Intellectual Property Research Institute, University of London.