European IP Bulletin, Issue 54

Overview


In Depth

Hot Topics

Preventing parallel trade in the European Union
In its recent decision in Lelos and Others v GSK C-468/06, the European Court of Justice has ruled that pharmaceutical companies can take measures to ensure that their commercial interests are not threatened by parallel traders within the European Union. However, the pharmaceutical companies will not be able to stop supplies to wholesalers completely—instead they must continue to meet supplies that are “not out of the ordinary”.

E-Commerce

Keyword advertising and use as a trade mark—Cour de Cassation refers keyword suggestion tools to the European Court of Justice
An increasing number of companies are bringing actions in Europe against internet search engines in respect of their keyword advertising programs. The reaction of the European courts to these cases has differed from one jurisdiction to another. Consequently, the French Cour de Cassation has asked for clarification from the European Court of Justice (ECJ). Simone Blakeney, an Associate in the London office of McDermott Will & Emery, sets out the decisions of the different courts and outlines the reference to the ECJ.

Patents

Ironing out inconsistencies between UK and EPO decisions
On 21 June 2008, in Merck & Co Inc v Actavis UK Ltd [2008] EWCA Civ 444, the Court of Appeal allowed the appeal of the Defendant, Merck, against the decision of the High Court that its patent was invalid for lack of novelty.

Exhaustion doctrine is very exhausting in the United States
The U.S. Supreme Court has finally ruled in the patent royalties case Quanta Computer v LG Electronics No. 06-937 [2008] in respect of exhaustion of patent rights in the United States.

Trade Marks

Can a shopping centre register a trade mark for retail services?
The UK High Court has allowed the registration of trade marks by shopping centres in relation to “retail services” in its decision in Land Securities plc v Registrar of Trade Marks [2008] EWHC 1744 (Pat).

Fir trees and air fresheners
In P L&D SA v OHIM C-488/06 [2008] (unreported), the European Court of Justice (ECJ) rejected the contention that the word element of a complex mark is systematically dominant in the overall impression given by that mark. The ECJ accordingly refused to reverse the Court of First Instance’s decision upholding an opposition to the registration of a composite mark featuring a fir tree shape for air fresheners.