European IP Bulletin – Issue 69


In Depth

Rome I: UK Ministry of Justice Outlines Main Provisions

The UK Ministry of Justice has issued guidance on Regulation 593/2008/EC on the law applicable to contractual obligations, commonly referred to as Rome I, which came into force in the United Kingdom on 17 December 2009. The guidance is intended to provide a brief summary of the most important provisions of Rome I.

Contract Construction: Admissibility of Without Prejudice Negotiations

Without prejudice negotiations are not normally admissible in proceedings to which they relate. There are exceptions and Oceanbulk Shipping & Trading SA v TMT Asia Ltd [2010] EWCA Civ 79 tests their boundaries. Allowing an appeal from a decision of Mr Justice Smith, the Court of Appeal of England and Wales has held that the exceptions do not extend to allowing evidence of without prejudice negotiations to establish background facts known to the parties as an aid to the construction of a settlement agreement reached in the course of those without prejudice negotiations.


UK Advertising Codes: Still Ensuring Advertisements are Legal, Decent, Honest and Truthful

Following the 2009 industry consultation, on 16 March 2010 the Committee of Advertising Practice (CAP) published the new CAP and Broadcasting Committee of Advertising Practice Advertising Codes and announced that they will go live on 1 September 2010. Although the Codes have been revised regularly, this is the first comprehensive review for the past eight years and the first time ever that the Codes have been reviewed by CAP itself rather than a statutory body.


Privacy and Libel: Recommendations for Change

On 9 February 2010, the House of Commons Culture, Media and Sport Select Committee published its Report on Press Standards, Privacy and Libel. The Report contains wide ranging recommendations on the balance between privacy and press freedom, the increased use of injunctions and super-injunctions, so-called “libel tourism”, the costs of bringing libel actions, press standards and regulation of the press.


Anti-Counterfeiting Trade Agreement

On 21 February 2010, Peter Hustinx, the European Data Protection Supervisor, issued an Opinion on the current negotiations by the European Union of an Anti-Counterfeiting Trade Agreement (ACTA) in which he calls on the European Union, and in particular the European Commission, “to strike a right balance between demands for the protection of intellectual property rights and the privacy and data protection rights of individuals” when negotiating ACTA.

Keywords, Sponsored Links and Trade Mark Infringement

AdWords enables advertisements (sponsored links) to be displayed, in return for payment, alongside natural search results that appear in response to keywords. Keywords are words or terms that can be purchased by advertisers. Three joined cases before the European Court of Justice—Google France & Google Inc v Louis Vuitton Malletier C-236/08, Google France v Viaticum & Luteciel C-237/08 and Google France v CNRRH, Pierre-Alexis Thonet, Bruno Raboin & Tiger, franchisée Unicis C-238/08 23 March 2010 (unreported)—concern adwords that are also third party trade marks


Breach of Confidence: Entitlement to Account of Profits

In relation to Vercoe v Rutland Fund Management Ltd [2010] EWCH 424 (Ch), Mr Justice Sales has made it clear that a successful claimant in an action based on breach of obligations of confidentiality, does not have complete discretion to choose between claiming an award of damages based on the notional fee the defendant should have paid to be released from those obligations and claiming an account of profits. The case relates to a venture capital company being found to have breached confidentiality agreements by using confidential information provided by the Claimants to proceed with a management buy-in without the Claimants’ involvement.


Novelty: Overall Impression

In its first ruling on the Community registered design—Grupo Promer Mon Graphic SA v The Office of Harmonization for the Internal Market T-9/07 (18 March 2010) (unreported)—the General Court of the European Union has overturned the Third Board of Appeal’s decision that a design registered by Pepsico Inc for “promotional items for games” produced a different overall impression to an earlier design registered by a Spanish company, Grupo Promer Mon Graphic SA. The General Court upheld the Board’s narrow definition of the category of designs in question, but decided that Pepsico’s design did not produce a different overall impression to Grupo Promer’s earlier design.


MG X POWER Struggle

In Nanjing Automobile (Group) Corporation, Nanjing Automobile Corporation (UK) Ltd and MG Motor UK Ltd v MG Sports & Racing Europe Ltd and William James Riley [2010] EWHC 270 (Ch), Sir William Blackburne (sitting as England and Wales High Court judge) decided in favour of Nanjing Automobile for registered trade mark infringement and passing off.

Descriptiveness: Specific Characteristics of the Market

In O2 (Germany) GmbH & Co OHG v The Office of Harmonization for the Internal Market T-344/07 10 February 2010 (unreported), the General Court of the European Union has annulled a Board of Appeal decision which had ruled that O2’s Community trade mark application for HOMEZONE in respect of various goods and services, including telecommunication services, should be refused registration on the absolute grounds of refusal set out in Article 7(1)(b) and (c) and Article 7(2) of the Community Trade Mark Regulation (40/94/EC)


Cosmetic Treatment Not Excluded as Treatment by Surgery

In Virulite Distribution Ltd (IPO) BL O/058/10 12 February 2010, Virulite Distribution Ltd sought to patent a method of treating skin cosmetically to remove wrinkles by using light at a very specific wavelength. The United Kingdom Intellectual Property Office (IPO) examiner objected on the ground that the invention was unpatentable as a method of treatment by surgery under Section 4A(1) of the Patents Act 1977. Patent Office hearing officer Stephen Probert held that this cosmetic treatment was neither surgery nor therapy as defined by previous European Patent Office decisions and therefore fell outside the exclusion under Section 4A(1).

Divergences in Industrial Applicability Between The United Kingdom And the European Patent Office

Rejecting an appeal by Human Genome Sciences Inc (HGS), in Eli Lilly and Co v Human Genome Sciences Inc [2010] EWCA Civ 33, the Court of Appeal of England and Wales upheld the finding that HGS’ patent (as amended) was invalid for lack of industrial applicability. Although consistent with first instance decisions of both the High Court and, in concurrent opposition proceedings, the European Patent Office (EPO), the Court of Appeal’s decision was inconsistent with that of the EPO’s Technical Board of Appeal, which had found the amended patent valid.

“Pozzoli/ Windsurfing” Tests and Problem-and-Solution Approaches to Obviousness

In Actavis UK Ltd v Novartis AG [2010] EWCA Civ 82 (17 February 2010), the Court of Appeal of England and Wales upheld the decision of Mr Justice Warren that Novartis’ European Patent for a sustained release version of a drug was invalid for obviousness over an immediate release formulation.


Reserved Short Domains

Nominet, the .uk top level domain registry, has published a Consultation on the release of two letter, one character and other reserved .uk domain names.