IP Snapshot: February 2008

United Kingdom

Bringing you monthly news of key developments in intellectual property law.


02 Holdings Ltd & O2 Ltd v Hutchinson 3G Ltd, ECJ AG Opinion (31 January 2008)

In December 2006, the Court of Appeal referred three questions to the ECJ in the O2 “bubbles” case. O2 had complained about Hutchinson 3G’s use of marks similar to its bubbles trade marks in comparative advertisements. LJ Jacob had provided his opinion to the questions when raising them and the AG Mengozzi has now concurred with all three. His opinion stated that (1) comparative advertising claims should be considered solely by reference to the Comparative Advertising Directive, not the Trade Marks Directive; and (2) use of a competitor’s trade mark, or similar mark, in a comparative advertisement does not have to be indispensable for it to be permitted under the Comparative Advertising Directive. If this opinion is followed by the ECJ, it will provide a favourable outcome for advertisers in general.

For our full Law-Now on this important decision, click here.

The Football Association Premier League Ltd. V QC Leisure and others (18 January 2008), High Court

The Premier League has brought proceedings against importers who it alleges have imported decoder cards giving access to broadcasts of live Premier League matches, and against pub landlords who the Premier League says have used such cards to show such matches. The Premier League alleges that by carrying out these acts the defendants are infringing their broadcast rights and copyright in the broadcasts of the matches. The defendants argue that their acts are permitted under EC Treaty provisions regarding free movement of goods and services and also that the Premier League’s contracts with foreign broadcasters breach Article 81 of the EC Treaty.

The High Court has rejected an application by the Premier League for summary judgment on the Article 81 defence, or alternatively for a stay of the Article 81 defence until the other issues have been decided.

For the full text of the decision, click here.

In the matter of trade mark registration nos. 2101627 and 2101632 in the name of T-Mobile (UK) Limited (13 December 2007)

The Appointed Person allowed an appeal by O2 Holdings Limited against a decision of the Hearing Officer, holding that the Hearing Officer was wrong to find that O2’s invalidity application was an abuse of process, and remitted the invalidity proceedings back to the Registry.

For the full text of the decision, click here.


Peek & Cloppenburg KG v Cassina SpA, AG Opinion (17 January 2008)

In response to a number of questions referred from the German Appeal Court, the Attorney General has delivered an opinion giving a narrow interpretation to Article 4(1) of the Copyright Directive (2001/29/EC). Notably the term ‘distribution’ in the Directive implied some form of transfer of property and was not satisfied by goods merely being made temporarily available for use by third parties.

For the full text of this Opinion, click here.


Astron Clinica Limited and others And The Comptroller General of Patents, Designs and Trade Marks (High Court) 25 January 2008

The High Court has ruled that the UK Intellectual Property Office’s (‘IPO’) practice of indiscriminately rejecting patent claims for computer programs is wrong. The decision, should the IPO decide not to appeal it, will force them to amend their practice note which offers guidance on the issue.

The matter reached the High Court because technology companies Astron Clinica, Software 2000, Cyan Holdings and Surf Kitchen challenged the IPO’s refusal to allow their patent claims relating to disks and downloads. The companies’ claims to a method using a programmed computer and/or to a computer system to carry out the method were approved, but the claims to the computer program itself were not.

For the full text of the decision, click here.