European IP Bulletin, Issue 65


In Depth


Data Protection Offences: Custodial Sanctions
The Ministry of Justice Consultation Paper (CP22/09) on the knowing or reckless misuse of personal data, published on 15 October 2009, sets out the UK Government’s proposals to introduce custodial sanctions for offences committed under Section 55 of the Data Protection Act 1998 of knowingly or recklessly disclosing personal data to third parties who have no right to that data.


P2P File-Sharing and the Fundamental Right to Internet Access
The European Parliament has withdrawn its controversial amendment to the European Commission’s package of telecoms reforms that would have guaranteed that any decision to suspend an individual’s access would be the sole preserve of the judiciary.


Exclusive Jurisdiction Clause: Claims Arising out of the Agreement Against Affiliates
In Morgan Stanley & Co International plc v China Haisheng Juice Holdings Co Ltd [2009] EWHC 2409 Comm, it was held that an exclusive English jurisdiction clause in an International Swaps and Derivatives Association Master Agreement applied only to the claims between Morgan Stanley & Co International plc – an English company within the Morgan Stanley group – and China Haisheng. It did not extend to those against Morgan Stanley Asia Ltd, a Hong Kong company in the Morgan Stanley group that was not party to the agreement.


Budweiser Dispute Returns to the ECJ
The Court of Appeal of England and Wales has made a reference to the European Court of Justice (ECJ) for clarification on: the meaning of “acquiesced” in Article 9(1) of the Trade Marks Directive, when the five year period for acquiescence commences, and whether Article 4(1)(a) of the Trade Marks Directive allows the proprietor of an earlier mark to prevail despite a long period of honest concurrent use.

Application for Restitution Out Of Time: Communication to Representative
In Evets Corp v OHIM joined cases T-20/08 and T-21/08, the Court of First Instance ruled that where an applicant for a Community Trade Mark appoints a representative, the Office for Harmonization in the Internal Market (OHIM) is entitled to treat communication with that representative as communication with the applicant. This is deemed to have taken place as soon as the representative has received notice from OHIM.

Exclusively Decorative Function
In The Smiley Company SPRL v OHIM 29 September 2009 T-139/08 (unreported), the Court of First Instance upheld the findings of the Office for Harmonization in the Internal Market’s Fourth Board of Appeal that a mark consisting of half a smiley mouth was devoid of any distinctive character.

Reputation in the Community
In PAGO International GmbH v Tirolmilch registrierte Genossenschaft mbH, 6 October 2009 C 301/07 (unreported), the European Court of Justice ruled that, for the purposes of Article 9(1)(c) of the Community Trade Mark Regulation (40/94/EC), reputation in a single Member State of the European Community can, on the facts, form a sufficient basis for a Community wide injunction to prevent a competitor from taking unfair advantage of a Community Trade Mark.


Sub-Licensing: The Issue of Implied Consent
In Makro Bediensgroothandel v Diesel SpA, 15 October 2009 C 324/08 (unreported), the European Court of Justice ruled that it is irrelevant, for the purpose of determining whether or not goods bearing a trade mark have been placed on the market within the European Economic Area (EEA) with the proprietor’s consent, whether those goods were first placed on the market inside or outside the EEA.


Restoration Application and Intention of the Applicant
In Orkli (UK) Ltd 30 September 2009 BL O/302/09 a UK Intellectual Property Office hearing officer has held that it is the intention of the patent proprietor and not his representative which is relevant in determining whether an application for the restoration of a patent under section 28(3) of the Patents Act 1977 should succeed.

Threat to Infringe
In Boegli-Gravures SA v Darsail-ASP Ltd EWHC 2690 Pat, 29 October 2009, the High Court of England and Wales held that a test purchase of an essential element of a patented invention carried out by a private investigator on behalf of the patentee is not itself an infringement, but is evidence of a threat to infringe.

Aircraft Seating Systems: The Court of Appeal Upholds Patent on Aircraft Seating Systems
In Virgin Atlantic Airways Ltd v Premium Aircraft Interiors UK Ltd [2009] EWCA Civ 1062, the Court of Appeal of England and Wales has upheld a patent relating to aircraft seating systems and given useful guidance on the expected level of knowledge of patent law of the notional skilled reader.


Distance Sales: Right of Withdrawal and Seller Compensation
Pia Messner v Firma Stefan Krüger 3 September 2009 C-489/07 (unreported) was referred by a German court to the European Court of Justice on the interpretation of Article 6 of the Distance Selling Directive (97/7/EC).


On and Offline Price Comparisons
The UK Advertising Standards Authority has concluded that a Tesco advertisement involving comparisons with Boots was unlikely to mislead and has cleared Tesco of breaches of CAP Code clauses 3.1 (Substantiation), 7.1 and 7.2 (Truthfulness) and 18.1 (Comparisons with identified competitors and/or their products).

Gambling Advertisements Featuring Young Persons
The UK Advertising Standards Authority has found that Betfair Ltd has breached the Code of Advertising, Sales Promotion and Direct Marketing on gambling when it created an e-mail advertisement for its online poker site which showed a photograph of a young woman with the text “ONLINE EXPERIENCE IS MEASURED IN GAMES, NOT YEARS. JOIN THE NEW BREED. Annette Obrestad – “ANNETTE_15″”.


Mutwal Community Football Club Loses Domain Name
In Manchester City Football Club Ltd v Vincent Peeris, Renown SC 2 October 2009 WIPO D2009-0686 a sole panellist ordered the transfer of the domain name to Manchester City, despite the involvement of the registrant with a community sports club in Sri Lanka called the Mutwal Community Football Club.