Questions on the law of evidence in plant variety infringement proceedings

Legal context. Section 940 of the German Civil Procedure Actproviding interim injunctions is applicable, inter alia, inthe enforcement of Plant Variety Rights. Key points. The nature of plants, as living organisms, meansthat the enforcement of intellectual property rights againstalleged infringers raises issues of proof and evidence thatare unique to their subject matter. Practical significance. Interim injunctions have great practicalimportance in Plant Variety infringement cases. Significantevidence problems exist due to the natural variations in plants.This article discusses the practical requirements for establishingevidence of infringement of plant variety rights in actionson the merits as well as in interim injunction proceedings.     

Inter Partes Proceedings and the Reform of the Community Trade Mark Implementing Regulation

Legal and practical context. Commission Regulation 1041/2005of 29 June 2005, which amends the Community Trade Mark ImplementingRegulation, entered into force on 25 July 2005. Substantialamendments are brought to inter partes proceedings, that isoppositions and applications in revocation or in invalidity,and appeal procedures. Key points. The rules governing the substantiation of the earlierrights and time limits are now stricter. Also, the new regimeaims at circumscribing the consequences of the rather broadinterpretation which the Court of First Instance gave over thelast two years to the notion of functional continuity betweenthe opposition division and the Boards of Appeal. Practical significance. The authors analyse the new provisionscontained in the Community Trade Mark Implementing Regulationin the light of the latest case law of the Court of First Instance,in order to provide practitioners with a simplified guide.     

Mediation of Intellectual Property disputes

Legal and practical context. Mediation can bring real benefitsin avoiding protracted and costly IP litigation and is suitablefor most IP disputes except where a matter of principle, suchas construction of patent claims, requires resolution. Key points. Mediation may be used at any time to resolve a dispute.The courts can give robust encouragement by means of costs sanctionsand ADR orders but cannot compel the use of mediation. The Proceedsof Crime Act 2002 may apply to some mediated settlements, particularlythose involving trade mark and copyright infringement disputes. Practical significance. The courts and the Patent Office areactively seeking ways to encourage mediation of IP disputesand the Patent Office has announced the setting up of a mediationscheme.     

Implementing Community obligations in the realms of intellectual property

Legal context. The various Acts of Parliament governing UK intellectualproperty law have been significantly amended to give effectto Community law. This article discusses the powers used bythe Secretary of State to implement Community obligations andthe Court of Appeal's recent clarification of the scope of thosepowers. Key points. This article describes the concerns expressed bysome commentators on the scope of the powers under the EuropeanCommunities Act 1972 and the key cases on that scope, includingOakley v Animal. The article uses the implementation of performers'moral rights as an example of where going beyond strict Communityobligations is necessary. Practical significance. The article will be useful to anyoneconsidering the validity of the changes made to domestic law,including amendments to primary legislation, to implement Directivesor other Community obligations.     

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.     

The software patent debate

Legal context. This article has practical application for thoseworking in the patent field, particularly with regards to thefiling of software patent applications. Key points. The article provides a detailed explanation of thestate of the art with regards to the legal protection of software,and describes the latest legal developments in the area, includingthe failed Directive on Computer Implemented Inventions andsome recent cases that may shed more light on some of the technicalissues involved in the area of software. The paper also exploressome of the arguments put forward by those in favour and opposedto software patents, in order to ascertain their validity. Practical significance. Existing case law may provide help tosolve the problem of patentability, but it might also be a goodidea to resurrect the idea that there should be a sui-generissoftware right.     

Is it a fair deal to tell tales on the tabloids?

Legal context. A recent High Court judgment, Fraser-WoodwardLimited v BBC and Brighter Pictures Limited, is of key interestto those that use or advise upon the use of copyright materialfor the purposes of criticism or review. Key points. This case involved the use of newspaper photographsof David and Victoria Beckham in a television documentary aboutthe relationship between celebrities and the press. The programmeillustrated its theme using screenshots of tabloid newspaperpages, which inevitably included a number of photographs. Theclaimant was the copyright holder in respect of a number ofthe photographs, and alleged that their reproduction in theTV programme was an infringement of copyright. The defendantssuccessfully relied upon the fair dealing and incidental inclusiondefences to copyright infringement. Practical significance. Although each fair dealing case willultimately turn on its own facts, Mann J gave a very usefulreview of the state of copyright law in this difficult area.     

One more outing for Arsenal: a case of dilution or one for restitution?

Legal context. This note, which comments on the preceding pieceby Susie Middlemiss and Steven Warner, deals with the implicationsfor the future development of passing-off of the dicta of AldousLJ in Arsenal v Reed, which are considered there. Key points. The article concludes that Aldous LJ was unlikelyto have been contemplating the introduction of a common lawdoctrine of trade mark dilution, or any other extension to passing-offwhich would remove misrepresentation from its central positionas one of the essential elements of the Classical Trinity, andthat the existing state of the authorities rules out any suchdevelopment by the Court of Appeal. Practical significance. It is tentatively suggested that anextension of existing passing-off principles to cases of pureunjust enrichment may have been what Aldous LJ had in mind,and that this would not necessarily be too radical a step forthe common law to accommodate.     

Patent construction after Amgen: are patent claims construed more widely or narrowly than previously?

Legal context. This article considers the UK Courts' approachto patent construction since the House of Lords' decision inKirin-Amgen Inc v Hoechst Marion Roussel Limited, which washanded down in October 2004, and seeks to examine whether theUK Courts' construction of patents is wider or narrower thanpreviously. Key points. The available data appear to suggest that thereis little difference in outcome, whether the old Improver testis applied or the new Kirin-Amgen test; of more significanceremains the nature of the wording of the patent claims themselvesand the correct identification by the trial judge of the inventionunderlying the patent. Practical significance. By eschewing a literal approach andrefining the test used in order to ensure both compliance withthe EPC and consistency with courts in other European countries,the UK Courts continue to provide an attractive forum for resolutionof patent disputes.     

Database rights' subsistence: under starter's orders

Legal context. The criteria for database rights' subsistenceset out in the Directive on the Legal Protection of Databasesare largely undefined. Guidance on their interpretation hasbeen provided by the ECJ and its guidance on qualifying investmentactivities was applied by the Court of Appeal in the BHB case. Key points. The article comments upon the guidance on the subsistencecriteria for database rights provided by the Advocate Generaland the ECJ in the BHB and Fixtures Marketing cases and analysesthe Court of Appeal's application of the production-processingdichotomy in the BHB case. It offers thoughts on thorny issuessuch as the avoidance of a double benefit for database developersin copyright and database right, the role of investments intechnology, and the effect of the production-processing dichotomyon the risk of monopolies over facts. Practical significance. Database developers seeking databaserights' protection should keep the subsistence criteria in mindwhen devising their processing arrangements, designing theirdatabases, and recording their investment activities associatedwith database development.     

Declaratory relief: don't be afraid to ask

Legal and practical context. Declaratory relief has the widestscope of any judicial remedy and its flexibility in providingguidance makes it the perfect judicial salve. Yet the remedyis under-used and receives little practitioner commentary. Key points. The Court's power to issue interim or final declarationsis discretionary. Furthermore, courts are more willing to grantan application for a declaration where there is a genuine dispute,in contrast with a purely theoretical issue. Specific statutoryprovisions for IP rights include declarations of non-infringementand unjustified threats. Intellectual property practitionersshould note that declaratory relief can be attractive becauseof its flexibility, efficiency and perception. It is less antagonisticthan a claim for damages. Conclusion. Declarations are a useful option for intellectualproperty practitioners. Although declaratory relief is commonlyregarded as a defensive measure, it can in reality be used asa "sword or a shield".     

Three IP blogs

Lessig Blog By Lawrence Lessig United States of America Archivedback to August 2002 http://www.lessig.org/blog/ Techno Llama ByAndres Guadamuz Scotland Archived back to October 2004 http://technollama.blogspot.com/ Patently-O:Patent Law Blog By Dennis Crouch United States of America Archivedback to April 2005 http://patentlaw.typepad.com/  

New pitfall for the pharmaceutical industry

Legal context This article reviews the Commission decision thatfined AstraZeneca 60 million for abuse of Article 82 EC. Itlooks at the decision in the context of the EU legal frameworkfor pharmaceuticals and considers the legal basis for the Commissiondecision. Key points The article highlights the key points of the allegedabusive practices that do not appear to be consistent with theEU regulatory legal framework and the ECJ jurisprudence in particular,read in conjunction with the principle of commercial freedom. Practical significance The Commission decision (if upheld bythe courts) would have an significant impact on the way thatpharmaceutical companies run their business. This would constitutean unprecedented interference with the principle of commercialfreedom afforded to pharmaceutical companies and specificallyrecognised by the ECJ.     

Pre-sale misrepresentations in passing off: an idea whose time has come or unfair competition by the back door?

Legal context. This article addresses the scope of the tortof passing off in English common law. Key points. The scope of passing off has traditionally beenlimited to confusion at the point of sale. Developments in marketpractice and trade mark law may argue in favour of extendingthat scope to cover both pre- and post-sale confusion. However,such an extension raises commonly voiced concerns about theintroduction of a general tort of unfair competition into Englishlaw. This article considers the specific issue of pre-sale confusionand concludes that there is both the need and the scope to bringit within reach of passing off. To do so would not amount tothe introduction of a general tort of unfair competition, butwould be entirely consistent with the rationale which has alwaysbeen the foundation for the tort. Practical significance. The conclusion advocated in this articlewould expand the range of conduct on which passing off claimscould be based and would increase the protection afforded tothe owners of famous brands.