European IP Bulletin, Issue 95

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In Depth


High Court Rules No Proprietary Interest in E-mail Content
In Fairstar Heavy Transport NV v Adkins and Another [2012] EWHC 2952 (TCC) the High Court of England and Wales held that there is no proprietary interest in the content of e-mails. The Court deemed the laws relating to copyright and misuse of confidential information sufficient to protect such content and, therefore, the establishment of any other interest was not necessary.

CJEU Confirms That Article 5(3) Jurisdiction Should be Applied to Declarations of Non-Liability in Tort
The Court of Justice of the European Union (CJEU) has held in Fofitec AG v Ritrama SpA [2012] C-133/11 that an action for a negative declaration seeking to establish the absence of liability in tort is within the scope of Article 5(3) of the Brussels Regulation, thereby harmonising the rules of contract and tort.

Data Protection

European Data Protection Supervisor Adopts an Opinion on The European Commission’s Cloud Computing Agenda
The European Data Protection Supervisor (EDPS), an independent authority dedicated to protecting personal data in the European Union, has adopted a European Commission opinion on Unleashing the Potential of Cloud Computing in Europe.


Patents County Court Has Wide Jurisdiction to Determine Claims Ancillary to Patent and Design Matters
In Ningbo Wentai Sports Equipment Co Ltd v Wang [2012] EWPCC 51 the Patents County Court (PCC) held that it has jurisdiction over an action for breach of confidence, if it is associated with a previous patent infringement claim under the PCC’s special jurisdiction in proceedings ancillary to proceedings relating to patents or designs.

Patents County Court Offers Guidance for Orders for Dissemination
In Brigade (BBS-TEK) Limited v Back-Tec Worldwide Ltd and Another[2012] EWPCC 52, the Patents County Court (PCC) dismissed an order for dissemination made by Brigade (as one of several consequential orders to an application for judgment in default) for lack of evidence.

Trade Marks

EU General Court Finds PHOTOS.COM Lacks Distinctive Character
In Getty Images (US) Inc. v OHIM [2012] T-338/11, the EU General Court has upheld a decision of the Board of Appeal of the Office of Harmonization for the Internal Market (OHIM), rejecting a Community trade mark application for the word mark PHOTOS.COM. The General Court found that it lacked distinctive character and had not acquired distinctiveness through use.

A Later Community Trade Mark Should be No Defence to Infringement of an Earlier Community Trade Mark
In response to a preliminary reference to the Court of Justice of the European Union (CJEU), Advocate General Mengozzi (the AG) has suggested that actions for infringement of Community Trade Marks (CTMs) should be possible against third parties holding a later CTM.

Descriptive Trade Marks Cannot Hide Behind The “Fig Leaf of Distinctiveness”
In Starbucks (HK) Ltd and others v British Sky Broadcasting Group plc and others [2012] EWHC 3074 (Ch) the High Court of England and Wales has held that Starbucks’ figurative Community Trade Mark (CTM) was descriptive and therefore invalid.

CJEU Holds That Use of a Trade Mark in a Different Form May Constitute Genuine Use
In Bernhard Rintisch v Klaus Eder [2012] 553/11, the Court of Justice of the European Union (CJEU) has held that in order to establish genuine use, a trade mark owner is not precluded from relying on the fact that it has used its mark in a form differing from its registered form, provided that the differences do not alter the distinctive character of that trade mark. This applies even where the different form is itself registered as a trade mark.