European IP Bulletin, Issue 47


In Depth

Copyright & Entertainment

Decryption of Premier League matches with imported decoder cards: is there a competition defence?
In Football Association (FA) v QC Leisure & Others [2008] EWHC 44 (Ch), Mr Justice Barling dismissed the FA’s application for summary judgment. The Defendants were importing and selling non-UK decoder cards, which allow access to Premier League football matches, despite the fact that this was explicitly forbidden by the Defendants’ contract with the FA. The Defendants relied on Article 81 of the EC Treaty. Barling J. did not accept the FA’s submission that this defence had no prospect of success at trial and refused to enter summary judgment.

Privacy v Copyright—the dispute continues
In the case of Productores de Música de España (Promusicae) v Telefónica de España SAU (Telefónica)[2008] (C-275/06), the European Court of Justice ruled that the exclusion of communication of personal traffic data by Member States for the purposes of initiating civil proceedings against copyright infringement was compatible with EC law.


Defamation in the media: Reynolds privilege
On 23 November 2007, in Malik v Newspost Ltd & Others [2007] EWHC 3063 (QB) Eady J. decided as a preliminary issue that certain reporting by the Dewsbury Press could not rely on the defence of “qualified privilege”. In so doing, he stated that although the well-known Reynoldsmedia defence did not apply, there was still a possible defence of privilege, provided that safeguards had been taken by the newspaper.

Defamation v Freedom of Expression
In the recent case of Edward Seaga v Leslie Harper [2008] UKPC 9, the Privy Council has upheld the decision of the Court of Appeal of Jamaica in dismissing qualified privilege as defence to defamatory statements published in the media on the basis of the test outlined by the House of Lords in Reynolds v Times Newspapers Ltd.

Trade Marks

No confusion over IKEA and IDEA
The Court of First Instance (CFI) has dismissed an application for annulment of the trade mark IDEA in Inter-Ikea Systems BV (IKEA Systems) v the Office for Harmonisation in the Internal Market (OHIM). IKEA had objected to the registration of the mark on the basis of its earlier rights to the IKEA trade marks. However, the CFI found that there was no similarity and no likelihood of confusion between the IKEA marks and the IDEA mark even used in relation to identical goods.

The Court of Appeal overturns Eli Lilly’s interim injunction
On 5 February 2008, the Court of Appeal confirmed that the criterion for establishing trade mark infringement in cases involving importation and/or transhipment is whether or not there is an interference with the owner’s right of first marketing within the European Union.


Improved Search Interface is a computer programme “as such”
In Autonomy Corporation Limited v The Comptroller General of Patents, Trade Marks and Designs [2008] EWHC 146 (Pat), the Comptroller successfully resisted a patent application for a method to improve the search interface between a user and a computer, on the ground that it consisted of a presentation of information and a computer program “as such”.

M-Systems v Trek: Issue estoppel in patent litigation and the future of post-grant amendments
In his recent decision in M-Systems Flash Disk Pioneers Ltd v Trek 2000 International Ltd & Anor [2008] EWHC 102 (Pat), Kitchin J. held that a foreign judgment in a case involving the same parties and the same patent will not operate as an issue estoppel between those parties in UK proceedings.

Commercial & Confidential Transactions

Database right and duties of fidelity can be useful alternatives to an action in breach of confidence
The decision in Crowson Fabrics Ltd v Paul Rider, Warren Stimson and Concept Textiles Limited [2007] EWHC 2942 (Ch) addresses the relationship between ex-employer and ex-employees, the duties of confidentiality, fiduciary, fidelity and the database right.

Legislation News

  • Pharmaceutical sector under European Commission Scanner
  • Copyright exceptions—Consultation on the recommendations of the Gowers Review
  • Google-Doubleclick merger will not involve the merger of the two companies’ databases