European IP Bulletin, Issue 56


In Depth


Human Stem Cell Inventions
The Enlarged Board of Appeal of the European Patent Office has provided clarification regarding the patentability of a method for obtaining embryonic stem cell cultures from primates including humans.

Business Methods
In Bilski (Federal Circuit 2007-1130) the U.S. Court of Appeals for the Federal Circuit adopted a test for patent eligibility that effectively narrows the scope of patent-eligible subject matter with respect to business methods and process claims in general.

UK-IPO Press Release Regarding Computer Program Patents
On 7 November 2008 the UK Intellectual Property Office (UK-IPO) issued a press release regarding the patentability of computer programs following the Court of Appeal decision in Symbian v Comptroller General of Patents.

Trade Marks

Counterfeit Products: Trade Mark Use
In R v Gary Boulter [2008] EWCA Crim 2375, the English Court of Appeal upheld the Bristol Crown Court’s ruling that it is no defence to a charge of unauthorised trade mark use that the reproduction of the mark was of such poor quality that nobody would be confused into believing that the goods originated from the owner of the trade mark.

Medicines and The Average Consumer
In Aventis Pharma v OHIM [2008] T-95/07 the Court of First Instance agreed with an Office of Harmonization for the Internal Market (OHIM) Board of Appeal finding that health professionals and end users of medicines are likely to pay above average attention to the differences between two trade marks, thereby diminishing the likelihood of confusion.

Shapes: Technical Result Objection
In Lego Juris A/S v OHIM [2008] T-270/06, the Court of First Instance has upheld an Office of Harmonization for the Internal Market (OHIM) Grand Board of Appeal decision that Lego’s Community trade mark registration of a red four-by-two brick was invalid because it consisted exclusively of the shape of goods that was necessary to obtain a technical result.

The European Court of Justice has handed down its judgment in Intel Corporation Inc v CPM United Kingdom Ltd [2008] C-252/07 on the extent to which a mark that enjoys huge reputation will suffer from use of that mark on any third party goods or services.

MONGOLSTM Injunction
The U.S. District Court has granted an injunction prohibiting Club members, their family members and associates from wearing, licensing, selling or distributing their Club’s identifying logo, which had been registered at the U.S. Trade Mark Office.

Intellectual Property

UK-IPO Considers Derogation Extension for Deceased Artists
The UK Intellectual Property Office (UK-IPO) is currently assessing the likely impact of the “Artist’s Resale Right” and the special derogation for deceased artists on the UK art market.

Online Libel: No Inference of Substantial Publication
In Shaun Brady v Keith Norman [2008] EWHC 2481 (QB) it was determined that the claimant in a libel action has the burden of proving that the material in question has been read by individuals in circumstances in which publication was not protected by qualified privilege.


Consumer Rights Directive: Potential Changes to UK Consumer Protection Legislation and Regulation

We review the UK Consultation paper on EU proposals for a Consumer Rights Directive for changing the way in which business-to-consumer online trading is regulated in the United Kingdom.

Data Protection

Data Sharing, ICO Powers and Data Breach Notification
On 24 November 2008, the UK Ministry of Justice announced that “the Information Commissioner is to be given tougher powers to regulate the Data Protection Act”.


Unfair Contract Terms: Match Ticket Refunds and Health Club Membership Agreements
The Office of Fair Trading (OFT) is calling generally on all clubs to ensure their terms and conditions are compliant with the law. The move comes after the OFT took action against Tottenham Hotspur FC and Fitness First for potential breaches of the Unfair Terms in Consumer Contracts Regulations 1999.

Advertising and Marketing

TV and Radio Codes: Reflecting the CPRs
The Broadcast Committee of Advertising Practice (BCAP) has revised its TV and Radio Advertising Standards Codes to reflect the requirements of the Consumer Protection from Unfair Trading Regulations 2008 (CPRs).