Common sense prevails in trade mark transfer dispute

The High Court of Justice has interpreted Article 17(2) of theCommunity Trade Mark Regulation, which provides that ‘[a]transfer of the whole of the undertaking shall include the transferof the Community trade mark’, in a commonsense mannerthat provides that the Community trade mark shall follow thetransferred business. The Court gave great weight to facts andcircumstances of the relevant transactions in giving effectto the transfer of the trade mark rights.     

ECJ allows service marks for retail trade and tells Nestle it can 'HAVE A BREAK' without having a Kit Kat

In response to a reference from the UK Court of Appeal, undertrade mark Directive 89/104/EEC of 21 December 1988, the ECJdetermined that distinctive character may be acquired throughuse as part of an already registered trade mark.     

The Myth of 'Rebalancing' Retaliation in WTO Dispute Settlement Practice

It is generally assumed that trade retaliation under the WTOperforms some kind of ‘rebalancing’ by allowingthe injured Member to suspend ‘concessions and obligations’vis-à-vis the violating Member of a level equivalentto the level of ‘nullification and impairment’ sufferedby the injured Member. This article argues that this perceptionis misguided. The article first questions if a sensible comparatorexists with which equivalence for purposes of ‘rebalancing’could be evaluated. It then argues that WTO arbitration decisionsdo not even succeed in their limited goal of providing for retaliationthat will affect trade in the same amount as the WTO-inconsistentmeasure at issue. One reason is the use of an asymmetric andunderspecified trade effects comparator. The other reason isvery significant miscalculation of the trade effects of theviolation, as shown by detailed legal-economic analysis of allrelevant arbitration decisions. The decisions concerning countermeasuresagainst prohibited export subsidies do not make any attemptat ‘rebalancing’ in the first place. The articleconsiders political explanations of arbitration decisions. Itconcludes with some suggestions for improvement.     

The Revised Directive on Waste: Resolving Legislative Tensions in Waste Management?

The revised Directive on waste (Directive 2008/98/EC) enteredinto force on 12 December 2008. The purpose of the revised Directiveis to simplify the existing legislative framework for wastein order to encourage the divergence of waste away from landfills,to strengthen legal certainty and minimise burdens on businesses,regulators and stakeholders. This article explores the mainfeatures of the revised Directive and assesses them againstthe European Commissions' intentions in introducing the Directive.In addition, the paper considers the extent to which the revisedDirective promotes successfully (i) reduction of natural resourceuse, (ii) prevention of environmental impacts of waste generation,(iii) life-cycle thinking and; (iv) securing waste prevention.The paper concludes that there is still room for further clarification,particularly in relation to the criteria for by-products andthe new waste management terms ‘end of waste’ and‘preparing for re-use’. Whilst the revised Directivehas weaknesses and limitations it should be considered withinthe context of decision-making. In this way it represents amulti-party, multi-institutional and multi-national compromisewhich should be considered as a progressive step towards improvingthe whole life-cycle of products and resources. Undoubtedly,the revised Directive sets the tone for future legislative developmentsand bolsters the importance of extended producer responsibilityin future waste management measures.     

Registration of terms borrowed from another language

In answer to a question referred by a Spanish Court in a disputeas to the validity of the Spanish trade mark MATRATZEN, theEuropean Court of Justice (ECJ) has ruled that trade mark ownersare not precluded by Article 3(1)(b) or (c) of the Trade MarksDirective (Council Directive 89/104) from registering in oneMember State a term borrowed from another language, unless itcan be demonstrated that relevant public in the Member Statein which registration is sought are capable of identifying themeaning of the term.     

An Analysis of the Transfer of Undertakings (Protection of Employment) Regulations 2006

This article analyses the Transfer of Undertakings (Protectionof Employment) (TUPE) Regulations 2006, which revoke, entirely,the TUPE Regulations 1981. As well as comprising the UK Government’sresponse to the amending Acquired Rights Directive 1998/50/EC,they purport to fulfil a four-fold aim of increasing the coverageof TUPE in outsourcing situations; clarifying the law on transferconnected dismissals and when employees may agree transfer relatedchanges to employment conditions; providing for the supply bytransferors of employee liability information; and relaxingthe provisions of TUPE in insolvency situations to the extentpermitted by the Acquired Rights Directive 2001/23/EC. It isto be argued that some of these aims are realised in the newRegulations, and others not. And certain areas worthy of newregulation are ignored. What is ultimately apparent howeveris that the new Regulations cannot be taken to be an ‘employers’charter’. In some instances the new Regulations may breathenew life (and litigation) into the law.     

Clear, Simple, and Precise Legislative Drafting: How Does a European Community Directive Fare?

In 2001, Martin Cutts redrafted Toy-Safety Directive 88/378/EEC¹in plain language. He criticized the language of that Directiveas being archaic legalese.² He added that Directives, as a whole,were poorly drafted.³ The European Commissions Legal Servicerejected his criticisms. It stated that it had published theEuropean Commission’s plain language guidelines⁴ afterDirective 88/378/EEC had been drafted. In a previous articlein the Statute Law Review,⁵ Butt and Castle’s⁶ plain languageguidelines were explicated using examples from Directive 2002/2/EC.⁷In this article, their guidelines are applied to the whole ofthat Directive to see if its language is ‘clear, simple,and precise’.⁸ The criticisms made in the previous article,⁹combined with those made in this article, suggest that the draftersof Directive 2002/2/EC¹⁰ have not yet mastered the skill ofwriting in ‘clear, simple, and precise’ language.     

Bitter pill for the pharmaceutical industry

In Case C-431/04 of 4 May 2006 the European Court of Justiceruled that a combination of an active ingredient and an excipientcannot be understood as ‘combination of active substances’in the sense of Article 1(b) of Council Regulation 1768/92 andthus is not entitled to SPC protection.     

Making drugs available at affordable prices: how universities' technology transfer offices can help developing countries

Legal context: In recent years, the prices at which medicines are soldin, and to, developing countries has become a hot politicalsubject affecting the international pharmaceutical industry.Specific legislative measures have followed the political debate,including (1) the EU Regulation 816/2006 on ‘compulsorylicensing of patents relating to the manufacture of pharmaceuticalproducts for export to countries with public health problems’and (2) the The Doha Declaration adopted by the Fourth MinisterialConference of the World Trade Organisation (WTO) in 2001, andthe subsequent Decisions by the WTO General Council to implementthe Declaration in August 2003 and to amend the TRIPs (Trade-RelatedAspects of Intellectual Property Rights) Agreement in December2005. Universities are increasingly considering whether to includeterms in their licence agreements with pharmaceutical companiesthat address this issue. Key points and practical significance: Universities may wish to consider whether it is part of theirmission to negotiate special terms in licence agreements tobenefit the developing world. Where universities decide that,in principle, they wish to include ‘humanitarian-licensing’clauses in their licence agreements, they need to find a formof words that is likely to achieve their objectives and be acceptableto pharmaceutical industry licensees. This article considerssome of the options and suggests some specimen wording.     

Spanish court rules in 'Accessorize' trade marks case

The Barcelona Court of First Instance No. 1 found in favourof the claimants, owners of the famous registered trade mark‘Accessorize’ in their action for trade mark infringement,trade mark cancellation, unfair competition, and damages inrespect of the use by the defendants of the Accessori, Mr Accessoriand Accessori trade marks.     

Trade mark use in transit: EU-phony or cacophony?

Legal context The present article discusses the opinion of Advocate-GeneralJacobs in Case C-405/05 Class International BV v Unilever NVand others, according to which trade mark owners cannot opposethe entry into the European Union of grey market non-Communitygoods placed in external transit, on the grounds of Article5(1) of the Trade Mark Directive, or any equivalent provision,as such entry does not constitute trade mark use. Key points We examine the consistency of this approach withprior case law of the European Court of Justice, namely in theCommission v France, Rioglass, The Polo/Lauren and Rolex casesand draw a parallelism with Council Regulation (EC) 1383/2003. Practical significance We conclude that trade mark owners shouldbe allowed to prohibit the placing in transit of goods whichwould infringe an intellectual property right under the lawof the transit country, unless the owner or consignor of thelitigious goods can undeniably prove that the goods are notdestined for the internal market. Stop press. At the end of the article the authors provide abrief analysis of the European Court of Justice's decision of18th October 2005 in this case.     

Towards an EC directive on plant breeder's rights?

Legal context: Although ‘Brussels’ has established many Directivesand Regulations in the field of IP law during the last two decades,there is still no Council Directive on plant breeder's rights. Key points: The article first examines the current national plant varietyprotection laws in force in the EC Member States. It then focuseson some figures with regard to national applications and Communityapplications for plant breeder's rights filed in the years 2001–2005.Subsequently, it discusses a number of optional provisions laiddown in the 1991 UPOV Convention and it points out the manydifferences in national laws that result from this UPOV text.In particular, it draws attention to national differences withregard to the protection of products made directly from harvestedmaterial, the farmer's privilege, and the term of protection. Practical significance: The article concludes that national applications for plant varietyprotection still play a significant role next to Community applications.It argues that the establishment of a Directive would be worthconsidering, as the differences between the laws of the MemberStates lead to barriers to the free movement of goods and toa distortion of the conditions of competition on the commonmarket.     

Community trade mark case law round-up 2006

Legal Context: This article looks at the important decisions of 2006 on theCommunity Trade Mark made by the Court of First Instance, theEuropean Court of Justice and the OHIM. These cases concernthe application of Council Regulation 40/94 on the CommunityTrade Mark, and also preliminary rulings from the European Courtof Justice on the interpretation of Council Directive 89/104(the Trade Mark Directive). Key Points: The volume of case law relating to Community trade marks, notto mention the variety of official languages in which the lawis interpreted, makes it almost impossible for even the conscientiouspractitioner to keep abreast with developments as they occur. This article provides an overview of the shifts in Communitytrade mark practice, in terms of not only the relatively accessiblesubstantive law but also the far more diffuse areas of procedurallaw and Office practice. In seeking to review and explain these shifts, the authors haveadopted a view of the case law that is functional rather thanphilosophical. In doing so, they lay bare the manner in whichthe institutions that administer and adjudicate Community trademark issues interrelate to one another. Practical Significance: Practitioners can quickly find the important decisions from2006 relating to particular articles of the Council Regulation40/94 on the Community Trade Mark. This article provides an overview of the most significant trademark cases decided in 2006 by the European Courts of Justiceand the OHIM Boards of Appeal. The article enables practitionersto access rapidly the key decisions of 2006. The cases discussed concern the application of Council Regulation40/94 on the Community trade mark (‘CTMR’), CommissionRegulation 2868/95 implementing the CTMR (‘CTMIR’),and Council Directive 89/104 (the ‘Trade Mark Directive’).     

Deceit and immorality in trade mark matters: does it pay to be bad?

LEGAL CONTEXT: This paper reviews some of the recent leading decisions of theOHIM's Boards of Appeal, interpreting Article 7(1) (f)–(k)of Council Regulation (EC) No. 40/94 of 20 December 1993 onthe Community trade mark (CTMR). KEY POINTS: Issues of public morality are considered in Grand Board's decisionin ‘Screw You’ and trade marks that deceive thepublic as to the nature, quality, or geographic origin of thegoods and services they cover are looked at in the ‘WineOh!’ case. The application of the public interest conceptunderlying heraldic signs, emblems, and geographical indicationsappearing on alcoholic beverages is also reviewed. PRACTICAL SIGNIFICANCE: The attempt to draw together some common threads of the decisionsin this area is designed to help practitioners understand whythe Boards of Appeal have reacted in a certain way to a particularsituation and where the limits currently lie.     

Advocate General says comparative advertising is not a matter of trade mark law

According to Advocate General Mengozzi, trade mark infringementis not relevant in assessing the legality of a third party'suse of an identical trade mark or similar sign in comparativeadvertising, but such advertising is governed exhaustively byArticle 3a of the Misleading Advertising Directive (84/450),as amended by the Comparative Advertising Directive (97/55)(‘CAD’).     

'Innocent infringement' and the Community unregistered design right: the position in the UK and Ireland

Legal context and Key Points: This article systematically examines ‘innocent infringement’—highlightsits non-uniform nature and summarizes defence it offers as toliability and/or remedies across a range of national UK andIrish IP rights—particularly copyright and design. It considers ‘innocent infringement’ in contextof community unregistered design right (directly applicablein all EC member states under EC Reg 6/2002) and assesses ifit affords defence to liability or financial remedies—suggestsanswer depends on meaning and effect of Article 19 (2), Article89 (Reg 6/2002) and consideration of; the harmonizing effectof the Enforcement Directive (2004/48/EC); the ensuing respectiveUK and Irish IP Enforcement Regulations 2006; the UK's CommunityDesign Regulations.2005. It concludes: limited scope of Reg 6/2002 indicates ‘innocentinfringement’ affords neither defence to liability nora limited defence to damages, but contrasts the role of discretionaryremedy of account of profits, and nevertheless predicts UK andIrish Design Courts may seek to justify ‘innocent infringement’offers limited defence to damages. Practical significance: Given that the community unregistered design right, applicableEC wide, is useful and of interest in many commercial fields(eg fashion, furnishings, etc.), which require short-term protectionagainst copying by over enthusiastic competitors, understandingthe status and effect of ‘innocent infringement’on liability and financial remedies is important.     

Retail cascading in Germany a model for a revision of the PD?

The first 150 words of the full text of this article appear below. Key points

• The EU Prospectus Directive (the ‘PD’),as implemented in several EEA member states, including the UnitedKingdom, and the Regulation accompanying the PD (the ‘Regulation’)render difficult or even inhibit public offers of debt securitiesto retail investors.
• Market participants and their advisors,trade associations such as the International Capital MarketAssociation (‘ICMA’), as well as the United KingdomListing Authority (‘UKLA’) and the Committee ofEuropean Securities Regulators (‘CESR’) have beendealing with the issues. UKLA and ICMA have come forward byproposing a solution regarding the information requirementsof Annex V.5 of the Regulation. The proposal is to utilize Article23.4 of the Regulation allowing information required by theRegulation to be omitted if the information is not pertinentto the offer. CESR may take a wider approach. It has indicatedits willingness to assess whether further Level 2 work is appropriateand legislative action will . . . [Full Text of this Article]