The W***D C*P of 2*1*: FIFA's intellectual property rights in South Africa

Legal context: This article focuses on the relationship between trade markrights and other forms of statutory protection. Key points: FIFA is the proprietor of a number of trade mark registrationsin South Africa. The strength of these registrations is discussedand the view taken that a number are open to attack, in termsof both distinctiveness and user requirements. It is then shownthat, if statutory protection is given for the same words andphrases, the weaknesses of the trade mark registrations willbe avoided. Practical significance: The article serves as an illustration of the manner in whichinternational sporting bodies attempt to extend their IP protectionbeyond the bounds of existing legislation.     

Post-termination use of licensed intellectual property by licensees

Legal and practical context: The ongoing dispute between Nokia and Qualcomm exemplifies thecomplex issues that arise when the licensor–licensee relationshipbreaks down. It illustrates that any means by which a licenseecan secure rights to use licensed IP after termination of alicence agreement can be of great commercial importance, notto mention significant economic value. If a licensee can continueto use licensed IP notwithstanding that its agreement has beenterminated, a licensor's ability to control and derive maximumeconomic benefit from its IP may be fundamentally compromised. Key points: The means available to licensees to secure such rights varydepending on the kind of IP right licensed, but there are severalcommon themes, which draw on a diverse range of legal rulesand concepts, including specific IP concepts and laws (includingthe rules relating to assignment and licensing, the exhaustionof rights, revocation and invalidation, and defences to infringementclaims), contract law and competition law. This article discussespractical implications to be considered when drafting IP licenceagreements. Conclusions: From a licensee's perspective, the termination of its licenceagreement is not necessarily the end of the road. Licenseesshould be aware of these post-termination rights when expectingto face difficult renegotiations with a licensor. From bothparties' perspectives, but particularly that of licensor, thisarticle should demonstrate the importance of drafting to avoidany uncertainty that may arise on the termination of a licenceagreement.     

Influence of WTO decisions on international intellectual property

Legal context: The task of harmonization in the IP framework is currently atrisk. This conclusion is shown by the way EU Member States have recentlyenacted Directive 2001/29 on the harmonization of certain aspectsof copyright and related rights on the information society.Particularly, no Member State seems to have considered the interpretationof the three-step test of the Berne Convention given in 2000by the WTO panel, notwithstanding its importance. Moreover, three recent opinions of the French Cour de Cassation,the French Conseil Constitutionnel, and the German Federal Courtof Justice appear not to have endorsed the WTO's interpretationof the three-step test. This scenario confirms the impressionthat the international framework is devoid of any degree ofharmonization. Key points: Although the aims of certainty and predictability in the internationaltrading system are among its main tasks, the World Trade Organizationhas not yet tackled the plight of harmonization, preferringa political approach to smooth conflicts and disputes. Yet,the World Trade Organization has recently taken important stepsthat seem to herald a new attitude. In United States—Sections301-310 of the Trade Act of 1974, the World Trade Organizationdismissed the traditional deference towards national legislations.In addition, at international and national levels, the AlleghenyLudlum and Softwood Lumber cases aligned their interpretationsto that of the World Trade Organization.     

Web 2.0, wikis, and the IP Community

Legal context: The emergence of new web-based programs being used in the fieldsof patent applications and IP legal information has opened upa range of new opportunities for IP-related legal processesand knowledge sharing. Key points: This article explains the background to Web 2.0 applicationsand explores the potential for the use of wikis in various areasof IP. It notes the limitations, as well as the possibilities,of wikis and explains how they work in practice. It outlinesthree recent examples of wikis in the IP world, explaining howthey work and the significance of their overall objectives. Practical significance: The adoption of this technology by official bodies suggestswider future use and the appearance of unofficial sites showsthat current developments have already reached a stage wheremany IP practitioners can begin to interact and share knowledgein a way that has not been considered previously. It is conceivablethat developments in this area will be rapid and it is in theinterests of users to familiarize themselves with the use ofthis new ‘social software’.     

Case law of the EPO Boards of Appeal in 2006

Legal context: The article reviews significant decisions handed down by theBoards of Appeal of the European Patent Office (EPO) in 2006,concentrating on decisions of the Enlarged Board and the Boardsof Appeal issued in 2006 and published or to be published inthe OJ EPO. Key points: The article discusses the application of Art. 24 EPC on exclusionand objection to members of the boards of appeal in the lightof the following decisions: G 1/05, T 281/03 and J 15/04; referralspending before the EBA on the subject of divisional applications(Art. 76 EPC and R. 25 EPC) and exclusion from patentabilityunder R. 23d(c) in conjunction with Art. 53a EPC; and decisionsof technical boards of appeal on exclusions from patentability(Arts. 52 (2)(3) and (4) EPC), the requirement of industrialapplicability (Art. 57 EPC) and re-establishment of rights (Art.122 EPC). Practical significance: The article provides an overview of the 2006 case law of theboards of appeal which is particularly useful since most ofthe decisions discussed have not yet been published in the OJEPO. The author is critical of the recent case law on the applicationof Art. 24 EPC (exclusion and objection to members of the boardsof appeal) and reports on several decisions of particular legalinterest.