European IP Bulletin, Issue 13

Overview


INTELLECTUAL PROPERTY

1. In The UK New Legislation Extends The Right To Opt-Out Of Telephone Marketing To Corporate Subscribers

The Privacy and Electronic Communications (EC Directive) (Amendment) Regulations 2004 come into force on 25 June 2004. They extend The Privacy and Electronic Communications (EC Directive) Regulations 2003 and enable corporate subscribers to register their desire not to receive unsolicited telephone calls for direct marketing purposes.

2. The IP Value of Business Plans: Protection for the Entrepreneur

A business plan is rarely thought of as being valuable because of the protectable IP rights contained and embodied in it. While it is usually treated as confidential and disclosed through a non disclosure agreement, it is usually considered as the vehicle to get money and not intrinsically valuable in its own right. However, the issue of value was recently shown in the English case of Ball v Druces and Attlee (a firm).

3. Hungarian IP Law: Beyond National Frontiers After EU Accession

Harmonisation of intellectual property rights in new member countries has been a hotly debated and eagerly awaited consequence of EU enlargement. Hungary has recently updated its law relating to Trademark and Design in line with its commitment to the treaty of accession. Other new member states like Lithuania are also undertaking statutory revisions to fulfil their treaty obligations.

4. Griggs v Evans: Are Foreign IPRs Subject To Equities Recognised By The English Courts?

For the first time, the High Court has addressed an important point of private international law concerning its jurisdiction to order the assignment of foreign copyrights that are subject to equities under English law. This case serves as a reminder that intellectual property rights are creatures of national law, and should be treated as such in the course of commercial negotiations. Nevertheless, by holding that the court has jurisdiction to order the assignment of all foreign copyrights subject to equities, this decision will come as a relief to those commissioning copyright works in the UK.


COPYRIGHT

5. Collective Society Of Music In The Information Society

The European Commission has warned collecting societies that their so-called Santiago Agreement, which aims at simplifying the licensing of music to be used online by allowing them to grant “one-stop shop” copyright licenses, may be in breach of European Union competition rules.

6. Irish Copyright Act Amended To Prevent Infringement Action Against National Library

Ireland recently amended its copyright legislation to clarify that literary and artistic works may be displayed in public without infringing the author’s copyright. The change came in response to threats by James Joyce’s estate that it was considering bringing an infringement action against the National Library of Ireland if the library went ahead with a display of various manuscripts written by Joyce as part of celebrations to mark the centenary of Bloomsday.


PATENTS

7. EPO Revokes Myriad Breast Cancer Patent

The opposition division of the European Patent Office has decided to revoke a patent, which had been granted to Myriad Genetics in 2001, relating to a method for diagnosing a predisposition for breast and ovarian cancer on the grounds that it did not meet the requirements of the European Patent Convention.

8. Commission Welcomes Council Agreement On Directive On Computer-Implemented Inventions

The Council of Ministers of the European Union has agreed a compromise over the Directive on computer-implemented inventions. However, important differences remain between the positions of the Council and European Parliament.

9. Celltech v Medimmune: ‘Infringement’ In German Patent Law Defined by English Courts

This case explains and formulates the precise scope of the test that a Court would adopt in determining the issue of patent infringement under the German law, if applicable in English proceedings. The Court, assisted by expert witnesses, accepted the “test of infringement” as laid down by German Supreme Court in the case of Formstein and Custodial II.

10. The End Of The Italian Torpedo

The Supreme Court of Italy has rejected the so-called Italian Torpedo as a way to tie-up cross-border patent infringement litigious with the Italians courts.

11. Kambly SA Spécialités de Bisuits Suisses v Intersnack Knabber-Gebäck GmbH & Co KG

This case, which started with a trade mark application in 1989 for the mark Goldfish, in English and German, and which went under opposition in about 1998, is an example of a case where nothing went right for the opponent to the registration of the mark.


TRADE MARKS

12. Violin-Maker’s Descendant Wins Case To Protect Stradivari Name

In a test case, a descendant of the violin-maker Antonio Stradivari has persuaded an Italian court to order an estate agent to stop using the name Stradivari. She is now threatening similar legal action against anybody who uses the Stradivari name.

13. Coco De Mer v Chanel

In a trade mark dispute over bottled perfume, Coco de Mer, named after an exotic Seychelles palm tree, failed in their appeal against the refusal of the Registrar of Trade Marks in the UK to register the mark COCO DE MER in a number of classes of goods, including class 3 (perfumery, essential oils, cosmetics).


ACKNOWLEDGEMENTS

McDermott Will & Emery would like to acknowledge the invaluable contribution to the Bulletin made by Angel Adrian, Lucas Arrivillaga, John Cahir, Malcolm Langley, YunJoo Lee, Rajesh Sagar, Ilanah Simon and Daphne Zografos from the Queen Mary Intellectual Property Research Institute, University of London.