In this issue:

Intellectual Property

  • ECJ Rules on the Notion of "Extraction" of the Contents of a Protected Database
  • CFI Continues to Clarify the Conditions of Confusion between Service Trademarks and Goods Trademarks

IT & Communications

  • English Court of Appeal Rules on the Patentability of Software

Marketing & Consumer

  • ECJ Rules on the Availability of Means of Contact for Customers in E-commerce
  • Svea Court of Appeal Requests Preliminary Ruling from ECJ concerning the Swedish Lottery Act

Life Science

  • ECJ Rules on the Status of the Mutual Recognition Procedure of Marketing Authorizations for Medicinal Products

In Brief

  • EU Pharmaceutical Forum Sets out Recommendations on Key Challenges in the Pharmaceutical Field
  • Consumer Agency Takes Action against TeliaSonera for Alleged Use of Unfair Contractual Term
  • USA Ratifies the Singapore Treaty on the Law of Trademarks
  • New Regime Proposed for Compulsory Storing of Medicinal Products

INTELLECTUAL PROPERTY

ECJ Rules on the Notion of "Extraction" of the Contents of a Protected Database

On 9 October 2008, the European Court of Justice gave a preliminary ruling on the interpretation of Article 7(2) a of Directive 96/9/EC on the legal protection of databases ("Database Directive"). In the ruling (Directmedia Publishing GmbH v Albert-Ludwigs-Universität Freiburg, C-304/07), the ECJ found that even in the absence of technical copying, the transfer of material from a protected database to another database may constitute an "extraction" of the contents of the protected database.

The University of Freiburg ("the University") published a list of verse titles called "The 1100 most important poems in German literature between 1730 and 1900" which was drawn up under the supervision of Professor Ulrich Knoop. Later a publishing company Directmedia started distributing a CD-ROM entitled "1 000 poems everyone should have".

Directmedia used the list drawn up by Professor Knoop as guidance in the selection of the poems for inclusion in its CD-ROM, but took the actual texts of the poems from its own digital resources. In the selection of poems, Directmedia critically assessed Professor Knoop's selection, omitting some poems and adding others. However, majority of the poems dating from the period between 1720 and 1900 contained on the CD-ROM had been mentioned in the list drawn up by Professor Knoop. Based on these facts the University, as the proprietor of the database rights, and Professor Knoop, as the proprietor of the copyright to the anthology, filed an infringement suit against Directmedia and claimed for damages.

The matter proceeded to the German Supreme Court, Bundesgerichtshof, which upheld the action brought by Professor Knoop as the compiler of the anthology and stated that the resolution of the dispute between Directmedia and the University depends on the interpretation of the Database Directive. The Court asked for a preliminary ruling from the ECJ on whether using the contents of a database in such circumstances constitutes an extraction within the meaning of the Database Directive, which the maker of the database may prevent.

According to the ECJ, the transfer of material from a protected database to another database following an on-screen consultation of the protected database and an individual assessment of the material contained in that first database is capable of constituting an extraction within the meaning of the Database Directive. Therefore, the maker of the database may prevent such transfer to the extent that that the operation amounts to a transfer of a substantial part of the contents of the protected database. The ECJ required no evidence of direct copying from the original database, setting the level of protection in practice relatively high as regards the copying of protected databases.

CFI Continues to Clarify the Conditions of Confusion between Service Trademarks and Goods Trademarks

The European Court of First Instance gave its ruling on 8 September 2008 in the case of Oakley, Inc v OHIM and Venticinque Ltd ( T-116/06) concerning the likelihood of confusion between a trademark for goods and a trademark for retail services. The CFI ruled in line with its previous case law that some of the goods and services were similar because they were complimentary and had similar distribution channels. The marks were also similar, and as a result there was likelihood of confusion between the service trademark and goods trademark in respect of certain goods and services covered by the marks.

Oakley had registered the word mark O STORE as a Community trademark, inter alia, for retail services and retail of eyewear and clothing in class 35. In 2002 Venticinque applied for the trademark to be declared invalid on the basis of its earlier French trademark THE O STORE registered for goods in classes 18 and 25 (covering among other things clothes). The Cancellation Division of the Office of Harmonization for the Internal Market ("OHIM") upheld the application for invalidation as regards retail services and retail of clothing but not for retail of eyewear. Both Oakley and Venticinque appealed the decision to the OHIM's Board of Appeals, which dismissed both appeals. The Board held that clothes and other goods covered by Venticinque's earlier trademark, and retail of such goods were similar because they had similar distribution channels. Furthermore, the goods and services were complimentary. There was, therefore, similarity between the goods and services. Since the marks were also similar this resulted in likelihood of confusion. Oakley further appealed to the CFI claiming that the goods and services were not similar.

This is not the first time the CFI has ruled on the similarity between goods and services. In 2002, it held that a close link between teaching materials and educational services in relation to end users. Also the fact that the products complemented the service made them similar ( T-388/00). In 2003 it held that metal treatment services were similar to goods for metal treatments because the services involved the use of the said goods ( T-224/01). In 2005, it ruled that event though goods are generally different from services by reason of their very nature, they can be found to be similar when services have the same purpose or use as the goods ( T-336/03).

According to the ruling of the CFI in the matter at hand, the goods and services in question were different of their nature, purpose and method of use. However, the fact that the retail services in question are provided at the same sales points where the goods are sold is a relevant criterion in the assessment of the similarity between the services and goods. The CFI further noted that complementary goods are closely connected to each other in the sense that one is indispensable or important for the use of the other, so that consumers may think that the same undertaking is responsible for both. The CFI concluded that the goods covered by Venticinque's earlier trademark are indispensable for retail trade in respect of such goods. Consequently, the CFI held that Oakley's services and the goods covered by the earlier mark are closely connected and therefore complementary and, finally, similar. The CFI concluded that as the trademarks were also similar they were likely to be confused. In conclusion, the CFI upheld the decision of the OHIM's Board of Appeals, confirming the invalidity of Oakley's service trade mark for retail and wholesale of, inter alia, clothing.

IT & COMMUNICATIONS

English Court of Appeal Rules on the Patentability of Software

On 8 October 2008, the England and Wales Court of Appeal gave its ruling on the patentability of software in the Symbian case ( [2008] EWCA Civ 1066). In the decision, the Court confirmed the applicability of the approach set forth in its earlier decision in the Macrossan case. In said case, the Court laid down the so-called Macrossan test for evaluation of the exclusions from patentability of claims relating to computer programs under Article 52 of the European Patent Convention ("EPC"). According to said Article 52(2) of the EPC, computer programs shall not be regarded as inventions within the meaning of Article 52(1).

The Macrossan test sets forth four stages for the interpretation of the scope of exclusions from patentability under Article 52 of the EPC. Firstly, the patent claim must be properly construed by clarifying the scope of the monopoly. Secondly, the actual contribution of the computer program must be identified as to what the invention adds to human knowledge. Thirdly, the examiner must evaluate whether the claim falls solely within the excluded subject matter and, fourthly, whether the actual or alleged contribution is actually technical of nature. On the basis of said test, the UK High Court has held in the Astron Clinica case that claims relating to computer programs may be patentable provided that the program delivers a relevant technical contribution.

In the Symbian case, the Court of Appeal reviewed all four stages and evaluated, in particular, whether the claimed subject matter made a technical contribution to the state of the art. The Court found the software application by Symbian not only resulting in a better computer but also resolving a technical problem. Consequently, the Court concluded that the Symbian application produced an effect on other pieces of technology and was, consequently, patentable.

The approach of the European Patent Office ("EPO") is slightly different from the one adopted in the United Kingdom. Following the interpretations of the EPO, if there is any feature of the claimed invention relating to a computer program which is not expressly excluded from being subject to patentability, the combination may be patentable despite the fact that some features, if standing alone, would have been precluded from registration. In the UK, patents may be granted to such inventions only if they satisfy the Macrossan test described above. The decision in the Symbian case may, however, in addition to adding to the interpretative basis for the consideration of patentability of software in the UK, have a unifying impact on the practice of the EPO and the national registration offices in Europe.

MARKETING & CONSUMER

ECJ Rules on the Availability of Means of Contact for Customers in E-commerce

Internet service providers are required to provide more contact information on their websites than just their name, business address, legal form, authorized representatives, share capital and their electronic mail address. This was confirmed by the European Court of Justice in a ruling rendered on 17 October 2008 ( C-298/07), where the ECJ found that in addition to an electronic mail address, Article 5 (1) of the Directive 2000/31/EC on electronic commerce requires service providers to provide to the recipients of their services information which allows the service provider to be contacted "rapidly and communicated in a direct and effective manner". Such information shall be given prior to the conclusion of a contract with the recipient of the services.

According to the ECJ, the additional information enabling rapid, direct and effective communication may be in the form of an electronic enquiry template through which the recipients of the service can contact the service provider via Internet, and to which the service provider can reply by electronic mail within a reasonable time (in the actual case within 30 to 60 minutes). Furthermore, if requested by the recipient in electronic communication with the service provider, the service provider must also provide the recipient with access to another, non-electronic means of communication, such as a telephone or fax number.

As to the adverb 'directly' within the meaning of Article 5(1)(c) of the Directive, the ECJ found that this does not necessarily require communication in the form of an exchange of words – i.e. an actual dialogue – but this should be interpreted as meaning the absence of an intermediary. Furthermore, the ECJ found that effective communication does not mean that the response must be instantaneous. On the contrary, a communication shall be considered effective if it permits adequate information to be obtained within a period of time that is compatible with the needs or legitimate expectations of the recipient.

Finally, the ECJ found that electronic means of communication shall not be the only way for a service recipient to contact the service provider, since a recipient "in exceptional circumstances", e.g., due to journey or holiday, may be deprived of access to the electronic network. Therefore, there must be a possibility to contact the service provider also by non-electronic means of communication. In addition to telephone contact, this could also mean personal contact at the premises of the service provider with a person in charge or contact via fax.

Svea Court of Appeal Requests Preliminary Ruling from ECJ concerning the Swedish Lottery Act

The Svea Court of Appeal has submitted to the European Court of Justice the question of compliance of the Swedish Lottery Act ( SFS 1994:100) with the principle of the free movement of services within the European Union. The request for a preliminary ruling has been made in appeals proceedings in a case where two publishers were sentenced to fines for advertisement of foreign betting and gambling companies in two Swedish newspapers. The matter involves the application of, inter alia, Section 38 of the Lottery Act, which prohibits the promoting of participation in lotteries organized outside of Sweden for the purpose of profit in commercial operations or otherwise. According to the Svea Court of Appeal, the provisions of the Lottery Act objectively restrict the rules on the free movement of services within the EU. Therefore, the request for a preliminary ruling from the ECJ aims at obtaining the ECJ's decision on whether these restrictions may be justified by acceptable grounds, e.g., the exemptions provided for in the EC Treaty.

LIFE SCIENCE

ECJ Rules on the Status of the Mutual Recognition Procedure of Marketing Authorizations for Medicinal Products

On 16 October 2008, the European Court of Justice rendered its decision in a case concerning the application of the mutual recognition procedure of marketing authorizations for medicinal products under Article 28 of Directive 2001/83/EC. In line with its earlier case law, the ECJ confirmed that only the existence of a risk to public health would constitute sufficient grounds for a Member State to object to the recognition of a marketing authorization granted by another Member State.

The matter relates to GlaxoSmithKline's ("GSK") commercial product Serotax (active ingredient paroextine hydrochloride hemihydrate), for which GSK has obtained marketing authorizations throughout Europe. In 2000, a company called Synthon obtained a marketing authorization in Denmark for its product, Varox. The marketing authorization was obtained through the abridged procedure on the basis that the active substance of Varox (paroextine mesylate) is essentially similar to the active substance GSK's Serotax, said substance being a different salt of the same therapeutic moiety. GSK challenged the grant of the authorization, but the Danish Court handling the matter submitted it to the ECJ, which in 2005 ruled that the abridged procedure could be used to grant an authorization for a different salt of an already approved therapeutic moiety. The ECJ's decision was subsequently implemented into legislation in an amendment of Directive 2001/83/EC in 2004 stating that: "different salts, esters, ethers, isomers, mixtures of isomers, complexes or derivatives of an active substance shall be considered to be the same active substance unless they differ significantly in properties with regard to safety and/or efficacy".

While the above referred matter was still pending before the Danish court, Synthon applied for marketing authorization in the United Kingdom under the mutual recognition procedure. Taking a view opposite to that of the ECJ, the regulatory authorities in the UK refused to grant a marketing authorization to Synthon. Although the UK authorities' practice was changed in 2003 and Synthon subsequently obtained a marketing authorization based on another application, Synthon challenged the earlier refusal and the English High Court referred the matter to the ECJ.

In line with its earlier decision and strengthening the status of the mutual recognitions procedure, the ECJ confirmed that the obligation of mutual recognition is strictly delineated by Article 28 of Directive 2001/83. According to the ECJ, it is clear from Article 28 that only the existence of a risk to public health constitutes sufficient grounds for a Member State to object to the recognition of a marketing authorization granted by another Member State. Therefore, it cannot be accepted that a Member State in receipt of an application for mutual recognition would question the assessment of essential similarity performed by the reference Member State when accepting an abridged application. The ECJ also concluded that the refusal to grant a marketing authorization by the UK regulatory authorities constituted a serious breach of Community law for which the UK may be held liable. This will enable Synthon to claim compensation for the delay in its entry onto the UK market for Varox.

IN BRIEF

EU Pharmaceutical Forum Sets out Recommendations on Key Challenges in the Pharmaceutical Field

The Pharmaceutical Forum that was set by the European Commission and brought together Member States and stakeholders has ended its three-year mandate by publishing a final report. The report sets out principles and recommendations for increased cooperation in three key areas: the provision of information on pharmaceuticals to patients, relative effectiveness of pharmaceuticals and pricing and reimbursement.

In addition to addressing the question of quality and accessibility of information on pharmaceuticals, the report scrutinizes the means how to compare medicines and identify the ones that are the most effective. It also sets out principles regarding certain common concerns concerning pricing and reimbursement of pharmaceuticals, such as the optimal balance between expenditure, access to medicines as well as the mechanisms to reward innovation. Furthermore, the report of the Pharmaceutical Forum addresses pharmaceutical counterfeiting, which is a growing danger in Europe. The issue is very topical also because the European Commission is currently preparing legislation in this area.

Consumer Agency Takes Action against TeliaSonera for Alleged Use of Unfair Contractual Term

The Consumer Agency has initiated proceedings against the teleoperator TeliaSonera at the Market Court, finding that TeliaSonera uses an unfair contractual term in its "Kestoetu" agreement and also continuously uses unfair marketing as it keeps presenting important information in small print. The Kestoetu agreement is marketed as a fixed-term contract of one year, even though in reality the client is required to terminate the agreement in order for it to expire. If the client does not react, the agreement is automatically renewed for another one-year period at a time. According to the Consumer Agency, such linking of agreements is contrary to the law and, therefore, the Agency has decided to take action by taking the matter to the Market Court.

New Regime Proposed for Compulsory Storing of Medicinal Products

The Finnish Government is proposing a new regime for compulsory storing of medicinal products. Government Bill (HE 151/2008) regarding the new regime was submitted to the Parliament on 3 October 2008. The purpose of the storing obligation is to sustain the supply of medicinal products in case of serious disturbances or under emergency conditions. The obligations to store pharmaceuticals concern manufacturers and importers of medicinal products as well as health care units. Under the proposed regime, the number of stored medicinal products would correspond to the domestic sales of the same product of either 3, 6 or 10 months. In most cases, this would cut down the storing obligation in comparison with the current situation. An annex to the Government Bill contains a detailed list of pharmaceutical substances which would be subject to the new regime. Because the list contains substances pertaining to new and more expensive medicinal products than the ones covered by the existing regime, the net value of stored products is estimated to grow by one third.

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