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IV. Intellectual Property

Published online by Cambridge University Press:  17 January 2008

Joe McMahon  and
Catherine Seville
Catherine Seville
Affiliation:
Director of Studies in Law, Newnham College, Cambridge.
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Extract

This Journal's previous piece on current developments in EC intellectual property noted that this area of law is dominated by the drive towards harmonisation.1 This drive continues, and its success has been such that it can now begin to be seen in an overarching context of globalisation. The idea of a unified global system for the protection of intellectual property now seems at least conceivable, even if not immediately achievable. It is even possible to state that some stages have been achieved on the journey, most notably the TRIPs Agreement. Since adherence to this is a requirement of World Trade Organization (WTO) membership, the arguments in its favour have suddenly become “persuasive”. It represents a tremendous achievement in terms of the protection and enforcement of intellectual property rights throughout the world. The World Intellectual Property Organisation's contribution here and elsewhere has been immense.

Type
Research Article
Information
International & Comparative Law Quarterly , Volume 50 , Issue 3 , July 2001 , pp. 714 - 724
Copyright
Copyright © British Institute of International and Comparative Law 2001

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References

1. (1999) 48 I.C.L.Q. 710.CrossRefGoogle Scholar

2. For contributions to the debate see Samuelson [1999] E.I.P.R. 578 Google Scholar, Gerhart [2000] E.I.P.R. 311 Google Scholar, Perlmutter [2001] E.I.P.R. 111 Google Scholar and Brimelow [2001] E.I.P.R. 44.Google Scholar

3. The text of WCT may be found at http://www.wipo.int/treaties/ip/copyright/copy-right.html. and the text of WPPT at http://www.wipo.int/treaties/ip/performances/perform-ances.html. Council Decision 2000/278, [2000] OJ L89/6.

4. WCT Arts 6 and 8 and WPPT Arts 8, 10, 12 and 14.

5. WCT Arts 11 and 12 and WPPT Arts 18 and 19.

6. WCT Art. 14 and WPPT Art. 23.

7. Provisional agreement only on the protection of audiovisual performances was reached in December 2000, and no instrument was adopted. Although all delegations pledged their best efforts in the future to achieve consensus, the timetable for further negotiations is not yet known. For the provisionally agreed articles see http://www.wipo.int/eng/document/ iavp/pdf/iavp-dc34.pdf. For the eventual stumbling block see http://www.europa.eu.int//comm/internal-market/en/intprop/introp/news/diplomat2.htm.

8. Arts 2, 3 and 4 of the Common position adopted by the Internal Market Council, [2000] OJ C344/1.

9. For trenchant criticism see Doherty & Griffiths [2000] E.I.P.R. 17 Google Scholar, Vinje [2000] E.I.P.R. 551 Google Scholar and Hugenholtz [2000] E.I.P.R. 499.Google Scholar

10. Art. 5. The mandatory exception aims to cover temporary copies made as an inevitable result of digital technology, many of which are innocuous and should not be subject to copyright. However, drawing the line between the acceptable and unacceptable has been hugely difficult and controversial, as might be expected. See Hugenholtz [2000] E.I.P.R. 482.Google Scholar

11. For example, the question of whether there should be an exception for private copying is one on which there is a history of fundamental and legitimate disagreement, with similar differences on the use of copyright material for the purpose of parody. Unharmonised implementation of some of the exceptions, such as that for the benefit of people with a disability, has the potential to frustrate their purposes and create unwelcome and unnecessary barriers.

12. Supra n.8. See also the Commission's response, SEC (2000) 1734 (Oct. 2000).

13. For details see http://www.europarl.eu.int/plenary/default–en.html.

14. For the Commission's (generally positive) reaction see COM(2001) 1734 final.

15. Royalties are not payable (under the current draft) below ECU 1000. The rates are 4% of the sale price between 1000 and 50,000 ECU, 3% between 50,000 and 250,000 ECU, and 2% above 250,000 ECU.

16. Commission proposal [1996] OJ C178/16, as amended [1998] OJ C125/8; Council's common position [2000] OJ C300/1; Commission Communication to Parliament COM (2000) 1516 final; Commission opinion on Parliament's amendments COM(2001) 47 final.

17. English and French are the languages of the Madrid Union, whereas there are five official languages at the OHIM plus six national languages of the applicant, which may be the language in ex parte proceedings. Amended proposal for a Council Regulation modifying Regulation 40/94 on the Community trade mark: adopted by Commission 30 April 1998 [1998] OJ C194/5.

18. Regulation 40/94 on the Community trade mark [1994] OJ L 11/1.

19. The OHIM web site is http://www.oami.eu.int. This has (inter alia) all the decisions of the Boards of Appeal, Opposition and Cancellation Divisions, and searchable databases of pending and registered CTMs. See also an interview with OHIM's Vice-President: [2000] E.I.P.R. 528.Google Scholar

20. The requirement of graphic representation may also present a challenge in this context. In Qlicksmart Pty Ltd's Application ([1999] E.T.M.R. 335) registration of a sound described on the application form as a click was refused on grounds that it did not contain a representation of the mark. The appeal was dismissed because the description was insufficiently clear and precise, giving no indication as to how the sound was created. Vennootschap onder Firma Senta Aromatic Marketing's Application ([1999] E.T.M.R. 429) to register “the smell of fresh cut grass” for tennis balls was initially refused on the grounds that this was not a graphic representation of the mark. On appeal it was held that the smell of freshly cut grass was a distinct smell that everyone recognises from experience, so the description complied with the graphical representation requirement.

21. C–299/99 Phillips Electronics v. Remington Consumer Products Ltd. The opinion of Advocate General Colomer was delivered on 23 Jan. 2001.

22. Although in T–193/99 Wm Wrigley Jr. Company v. OHIM the CFI reversed the decision to refuse registration to “DOUBLEMINT” as exclusively descriptive under Art. 7(l)(c) of the Regulation, holding that the numerous meanings of the composite term deprived it of any descriptive function. For a typical decision under Art. 7(l)(b) see T–19/99 DKV Deutsche Krankenversicherung AG v. OHIM [2000] 1 C.M.L.R. 508 Google Scholar, where the CFI agreed that “Companyline” was not registrable as it was devoid of distinctive character, being composed exclusively of customary English words. Note also that a sign must possess distinctive character throughout the Community, so an applicant seeking to show distinctiveness through use for the purposes of Art. 7(3) must demonstrate this in the substantial part of the Community where it was devoid of any such character under Art. 7(1): T-91/99 Ford Motor Company v. OHIM [2000] 2 C.M.L.R. 276. Google Scholar

23. Senso di Donna's Trade Mark [2001] E.T.M.R. 5.

24. Directive 89/104 [1989] OJ L 40/1.

25. Under former British law, for example, certain signs were considered so important geographically that they could not be registered even if there was conclusive evidence that in trade they were understood to be the applicant's trade mark: YORK Trade Mark [1984] R.P.C. 231.

26. C-108/97 Windsurfing Chiemisee v. Huber [1999] ECR I-2779. Noted Fox [2000] E.I.P.R. 1.Google Scholar

27. The referring German court in this case had asked how far the German doctrine of Freihaltebedürfnis (“need to keep free”) was relevant to the interpretation of Art. 3.

28. See Wagner, [1999] E.I.P.R. 127 Google Scholar and Würtenberger, [1999] E.I.P.R. 508.Google Scholar

29. Arts 4(l)(b) and 5(l)(b).

30. C–251/95 Sabel BV v. Puma AG, Rudolf Dossier Sport [1997] ECR 6191.

31. C–39/97 Canon Kabushiki Kaisha v. Metro-Goldwyn-Mayer Inc. [1998] ECR1–5507.

32. C–425/98 Marca Mode v. Adidas: noted Turner-Kerr, [2001] E.I.P.R. 49.Google Scholar

33. Further detailed guidance as to the criteria to be applied in assessing the likelihood of confusion is to be found in C–342/97 Lloyd Schufabrik Meyer & Co v. Klijsen [1999] ECR 3819.

34. Arts 4(3), 4(4)(a), and 5(2).

35. C–375/97 General Motors Corporation v. Yplon SA [1999] 3 C.M.L.R. 427 Google Scholar; [1999] E.T.M.R. 950. The national court should take into consideration all the relevant facts of the case, in particular the mark's market share, the intensity, geographical extent and duration of its use, and the size of the investment in promotion. It is not necessary that the mark should have a reputation throughout the territory of a Member State, it is sufficient that it extends to a substantial part of it.

36. Though for references to them see C–251/95 Sabel BV v. Puma AG, Rudolf Dossier Sport and C–425/98 Marca Mode v. Adidas supra n.30 and 32 respectively.

37. Joined Cases C–427, 429 & 436/93, Bristol-Myers Squibb & Others v. Paranova A/S [1996] ECR I–3457; Joined Cases C–71, 72 & 73/94, Eurim-Pharm Arzneimittel GmbH v. Biersdorf AG & Others [1996] ECR 3603; Case C–232/94, MPA Pharma GmbH v. Rhône-Poulenc Pharma GmbH [1996] ECR I–3671.

38. Based on Arts 30 and 36 EC, now Arts 28 and 30 EC.

39. C–379/97 Pharmacia & Upjohn v. Paranova [2000] 1 C.M.L.R. 51; [2000] F.S.R. 621.

40. Glaxo Group & ors v. Dowelhurst (No 2) [2000] E.T.M.R. 415; [2000] 2 C.M.L.R. 571; [2000] F.S.R. 529. See also Turner [2000] E.I.P.R. 434 Google Scholar; Wong [2000] E.I.P.R. 585 Google Scholar and Kur [2000] I.P.Q. 301. For the text of the questions referred to the ECJ see http://www.wood.eeta.gov.uk/courtser/judgments.nsf

41. C-337/95 Parfums Christian Dior v. Evora BV [1997] E.C.R. 1–6013.

42. C-63/97 BMW v. Deenik [1999] E.C.R. 1–905.

43. C-355/96 Silhouette International v. Hartlauer Handelsgesellschaft [1998] E.C.R. 4799, confirmed in C–173/98 Sebago Inc & Ancienne Maison Dubois v. GB-Unic [1999] E.T.M.R. 681.

44. Zino Davidoff v. A & G Imports [1999] 2 C.M.L.R. 973 Google Scholar; [1999] E.T.M.R. 700.

45. For the terms of the Order see [2000] 2 C.M.L.R. 750 Google Scholar. The approach in Davidoffrelies on contract law to limit the effect of Silhouette by sidestepping the issue of international exhaustion. Compare also the approach of the Scottish Court of Session in Zino Davidoff v. M & S Toiletries Ltd [2000] 2 C.M.L.R. 735 Google Scholar (distinguishing the English case on its facts) and JOOP! v. M & S Toiletries Ltd (judgment 4.4.2000), which found in each case that there was no consent to importation on the facts. In both cases Lord Kingarth expressed reservations about the implied consent argument: see MacQueen [2000] I.P.Q. 357 and Swift [2000] E.I.P.R. 377.Google Scholar

46. See, inter alia: Cornish [1998] E.I.P.R. 172 Google Scholar; Hays & Hansen, [1998] E.I.P.R. 277 Google Scholar; Zadra-Symes & Batista, [1998] E.I.P.R. 219 Google Scholar; White, [1999] E.I.P.R. 176 Google Scholar; Jehoram, Cohen, (1999) 30 IIC 19 Google Scholar; Wooldridge, [1999] I.P.Q. 379; Norman, [2000] E.I.P.R. 159 Google Scholar and Jones, [2000] E.I.P.R. 171 Google Scholar. See also Trade Marks, Fakes and Consumers, Select Committee on Trade and Industry, Eighth Report, July 1999 (HC 380), which recommends progress towards international exhaustion, with certain sectoral exceptions. The Government's response is generally in line with this report's conclusions, although it pointedly does not commit itself to any specific position: Appendix to the Tenth Special Report of the Select Committee on Trade and Industry, Sept. 1999, (HC 797).

47. The economic consequences of the choice of a regime of exhaustion in the area of trade marks. Final report for DGXV of the European Commission. Prepared by NERA, SJ Berwin & Co & IIF Research, Feb. 1999, London (p.26). See also the Commission's Working Paper on Exhaustion of Trade Mark Rights: http//www.europa.eu.int/comm./dgs/internal-market/en/intprop/indprop/exhaust.htm.

48. See Communique from Commissioner Bolkestein on the issue of exhaustion of trade mark rights, 7 June 2000: http:www.europa.eu.int/comm./internal–market/en/intprop/indprop/comexhaust.htm

49. Green Paper COM(97) 314. Communication: follow up to the Green Paper COM(99)42.

50. Proposal for a regulation on a Community Patent COM(2000) 412, adopted 5 July 2000. 51. (1999) 48 I.C.L.Q. 710.

52. Proposal for a Directive [1998] OJ. C36/13. Amended proposal COM(99) 309, adopted 30 June 1999.

53. Directive 98/44 [1998] O.J. L213/13. Implemented in the U.K. by Patents Regulations 2000 (S.I. 2000 No.2037) in force 28 July 2000. See also Llewelyn, [2000] E.I.P.R. 191.Google Scholar

54. Consultation Paper, The Patentability of Computer-Implemented Inventions, Oct. 2000: http://www.europa.eu.int/comm/internal–market/en/intprop/indprop/softpaten.htm. Comments were invited. See http://www.europa.eu.int/comm/internal-market/en/ intprop/indprop/softreplies.htm for the submissions received.

55. COM(2000) 660.

56. Proposal for a Regulation COM(99) 310 adopted June 1999; amended proposal COM(2000) 660 adopted Oct. 2000. For comment see Thorne, [2000] E.I.P.R. 583.Google Scholar

57. Directive 98/71 on the Legal Protection of Designs [1998] OJ L289/28, implementation by 28 Oct. 2001.

58. See http://www.europa.eu.int/comm/internal–market/en/intprop/indprop/design-new.htm.

59. C–23/99 Commission v. France [2001] E.C.D.R. 2. The ECJ held that intra-Community transit consisted in the transportation of goods from one Member State to another, and involved no use of the appearance of the protected design. Intra-Community transit does not therefore form part of the specific subject matter of the right of industrial and commercial property in designs. Since manufacture and marketing of these goods are both lawful in the relevant Member States, the impediment to the free movement of goods is not justified.

60. British Horseracing Board Ltd v. William Hill Organisation Ltd Times Law Reports23 Feb. 2001.