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snIPpets: IP newsletter


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snip•pet (snip'it) - noun - a small piece or portion,
specifically of information

Welcome to the March 2011 issue of snIPpets, the new intellectual property newsletter from Fieldfisher. 

In this edition of snIPpets topics discussed are as follows:

Trade marks

  • Advocate General's opinion on trade mark infringement through online paid advertising keywords: The Advocate General has handed down an Opinion in the dispute between Interflora and Marks & Spencer regarding use of the INTERFLORA mark for keywords which may prompt keyword advertisers to check their online advertisements.  Read more >
  • Chocolate bunny manufacturer is hopping mad after EU General Court rejects shape mark applications: General Court of the European Union decides that rabbits, reindeer and mice are typical shapes in which chocolate and chocolate goods are devoid of distinctive character.  Read more >
  • Advocate General advises on the Customs Regulation: If the Court of Justice of the EU follows a recent Advocate General Opinion, customs will have more leeway to seize and detain suspected counterfeit goods which are going though "external transit", merely requiring suspicion that they are to be put on the market in the EU.  Read more > 
  • Straplines - use as a Trade Mark?: The owner of the PLAY DOH mark succeeds in preventing use of straplines including "edible play dough" despite the descriptive nature of the words used.  Read more >
  • LESTEROL problems for Longevity Health Products: A decision of the EU General Court emphasises the dangers of allowing marks to be compared, and consumer perception assessed, in the abstract, and demonstrates the importance of using procedural tools available at the correct stage of proceedings.  Read more >
  • Court of Justice gives guidance on comparative advertising for foodstuffs: Court of Justice of the EU confirms that advertisements comparing food prices may fall foul of the Misleading and Comparative Advertising Directive 84/450.  Read more >
  • Court of Justice pulls the plug on DANELECTRO: Court of Justice refuses to reinstate Community trade mark registrations which were not renewed on time due to an administrative error.  Read more >




  • Headlines and extracts from newspaper articles may be protected by copyright: High Court rules that customers of a commercial online media monitoring service must obtain a licence from the Newspaper Licensing Agency.  Read more > 
  • Graphical user interfaces can be protected by copyright, rules European Court: The Court of Justice of the EU rules that a graphical user interface can be protected by copyright under the Information Society Directive, but does not qualify for copyright protection as a computer program under the Software Directive.  Read more >
  • A new era of rights licensing in Europe? The Advocate General takes on territorial exclusivity in the Pub Broadcasting Cases: The Advocate General advises the Court of Justice of the EU to rule that the system of territorial exclusivity in the licensing of broadcast rights to live Premier League football contravenes EU principles of free movement of goods and services and EU competition law.  Read more > 


Design right

  • Court of Appeal refers questions to the Court of Justice of the EU on jurisdictional issues in a claim for on-line infringement of intellectual property rights: The Court of Appeal has referred a question to the Court of Justice of the EU seeking guidance on whether direct infringement of sui generis database rights can occur where the defendant is based in another EU member state but places material online which can be accessed within the jurisdiction.  Read more >
  • "Grumpy elf" CTM cannot prevent design registration of similar cartoon: EU General Court rules that the owner of a Community trade mark registration cannot invalidate a Community design registration, even though the two look very similar.  Read more > 




  • Does Grim[m]e pay?: Court of Appeal provides guidance on the application of the contributory infringement provisions under section 60(2) Patents Act 1977.  Read more >
  • Reality trumps hypothesis - Court of Appeal overturns test for calculating the compensation to be paid to an employee inventor: The Court of Appeal rules that where an employer transfers the rights to an invention to a connected company, compensation to the employee inventor should be calculated according to the actual assignment that had occurred, and not on some hypothesis of what might have been.  Read more >
  • EU patent encounters major set back: Although the European Parliament has recently given the go-ahead for use of the "enhanced co-operation procedure" enabling an EU patent system to be created in those EU member states that wish to participate, this progress may be permanently stalled by a ruling of the Court of Justice that the proposed judicial system for Community and EU patents is not compatible with EU Treaties.  Read more >


Other news

  • Other snippets, including first case management conference held under the new Patents County Court rules demonstrates court's determination to streamline procedure; introduction of cap on damages for claims before the Patents County Court; developments with the Digital Economy Act 2010; and Professor Hargreaves' independent review of IP.  Read More >


For further information, please contact Mark Holah or Louisa Albertini.