European IP Bulletin, Issue 96

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In Depth


European Commission to Review Misleading and Comparative Advertising Directive
On 27 November 2012, the European Commission issued a Communication describing how the current legal framework set out in the Directive on Misleading and Comparative Advertising (Directive 2006/114/EC) has been implemented in the European Union. Highlighting current problems with its implementation, the Communication sets out how the Commission intends to clarify certain provisions of the Directive to eliminate harmful, misleading marketing practices and increase protection in the business-to-business (B2B) sector.

EU Commission Launches Consultation on Protection of Business and Research Know-How
The European Commission has launched a public consultation on the protection of business and research know-how (the consultation) within the European Union with a view to understanding public opinion on whether greater harmonisation across Member States is required, and whether current options for redress provide adequate protection for businesses, particularly those entering into cross-border transactions.

Data Protection

Information Commissioner’s Office Publishes Report on Enforcement of New Cookie Rules
Six months after the entry into force of amendments to the E-Privacy and Electronic Communications Directive 2002/58/ EC (the Directive), the Information Commissioner’s Office (ICO) has published an activity report (the report) that summarises general public concerns about the use of cookies by UK website providers. The report also sets out further action the ICO is taking, where appropriate, to ensure full enforcement of the requirements.


Court of Appeal Upholds Invalidity of Alzheimer’s Drug Patent
In Novartis AG v Generics (UK) Ltd (trading as Mylan) [2012] EWCA Civ 1623,the Court of Appeal has upheld the decision of the High Court that a patent for rivastigmine, protecting one stereoisomeric form of a racemic compound, was invalid for obviousness.

High Court of England and Wales has Jurisdiction to Try Pan-European Declaration of Non-Infringement Action
In Actavis Group HF v Eli Lilly and Company [2012] EWHC 3316 (Pat) the High Court of England and Wales has held that, in cases where there is no challenge to the validity of the European patent concerned, the English court has jurisdiction to try an action claiming declarations of non-infringement of patent designations in other European countries.

Trade Marks

Use of Community Trade Mark in Single EU Member State is Not Necessarily Sufficient to Constitute Genuine Use
In Leno Merken BV v Hagelkruis Beheer BV [2012] C-149/11, the Court of Justice of the European Union (CJEU) has held that use of a Community trade mark (CTM) in a single European Union Member State is not necessarily sufficient to constitute genuine use, and that territorial borders of Member States must be disregarded.

Scrabble Tile Trade Mark Declared Invalid
In J.W. Spear & Sons Limited & Ors v Zynga, Inc [2012] EWHC 3345 (Ch), the High Court of England and Wales declared invalid a trade mark registered to protect the tiles used in the board game Scrabble. The Court found that the trade mark did not comply with Article 2 of the Trade Marks Directive (2008/95/EC).

Updated Trade Mark Not Filed in Bad Faith
In s.r.o v Office of Harmonization for the Internal Market (OHIM) T-136/11, an attempt to invalidate a trade mark based on bad faith failed because the EU General Court was not persuaded that an application for an updated trade mark had been made to prevent the Applicant from losing its rights in respect of an earlier trade mark due to non-use.