IP Bulletin - September 2011

KEY CASES AND DEVELOPMENTS

L'Oréal SA and others v eBay International AG and others, ECJ- High Court reference. The ECJ has given its judgment on the questions referred it by the High Court. More >>> The Newspaper Licensing Agency Ltd and others v Meltwater Holding BV and others, Court of Appeal – NLA end-user licence. The Court of Appeal has upheld the decision of the High Court which held that end-users of an online news-monitoring service needed their own web end-user licence from the Newspaper Licensing Agency. More >>> Twentieth Century Fox Film Corporation and others v British Telecommunications plc, High Court – ISP to block access to Newzbin website. The High Court has ordered that BT take measures to block access to the Newzbin website. More >>> Lucasfilm Limited and others v Andrew Ainsworth and another, Supreme Court – copyright in a sculpture and enforcement of US copyright in English courts. The Supreme Court has upheld the lower courts' decisions that Star Wars Stormtrooper helmets were not sculptures, but overturned the Court of Appeal's decision that English Court did not have jurisdiction in a US copyright infringement claim. More >>> PATENTS

ECJ - questions on SPC referred by High Court Synthon BV v Merz Pharma GmbH & Co KG, C-195/09, 28 July 2011

The ECJ has followed the opinion of the Advocate General in a case in which the High Court referred questions to the ECJ on the interpretation of Article 2 of the SPC Regulation.

Article 2 of the SPC Regulation (EC Council Regulation No 1768/92) provides that:

"Any product protected by a patent in the territory of a Member State and subject, prior to being placed on the market as a medicinal product, to an administrative authorisation procedure as laid down in Council Directive 65/65/EEC or 81/851/EEC, may under the terms and conditions of this Regulation be the subject of a certificate."

On 14 April 1989, Merz applied for European Patent 0,392,059 ("the basic patent"). It was granted in 1993 and would expire without the benefit of the SPC on 14 April 2009. The basic patent was in respect of a second medical use of memantine: a fact which explains why it was granted despite the earlier commercial availability of memantine on the market in Germany for 25 years.

Merz was granted a SPC on 14 August 2003. Although the SPC was granted on the basis of EU-wide marketing authorisations granted in 2002, there was a 1976 authorisation under the then existing German law which did not require testing. Merz had also obtained a Luxembourg authorisation in 1983 which, although it was under a law which was consistent with Directive 65/65/EEC, relied on the German authorisation and did not test the product.

In its application for a SPC, Merz identified the basic patent. It also identified the 2002 authorisation, but not the earlier Luxembourg or German authorisations.

Synthon BV sought revocation of the SPC on a number of grounds, or a declaration that it had a zero term.

The High Court referred questions to the ECJ which asked the ECJ to clarify whether, as Merz contended, Article 2 refers to the placing on the market in the Member State in which the SPC application was made or, as Synthon argued, to the first placing on the market in the territory of the Community.

The Advocate General said (see April 2011 Bulletin) that it was not compatible with the objectives of the SPC Regulation to extend the protection to products which were already present on the Community market on a different basis before the marketing authorisation was obtained in accordance with Directive 65/65.

The ECJ has followed the Advocate General's opinion and held:

Article 2 of the SPC Regulation for medicinal products must be interpreted as meaning that a product, such as that at issue in the main proceedings, which was placed on the market in the European Community as a medicinal product for human use before obtaining a marketing authorisation in accordance with Council Directive 65/65/EEC and, in particular, without undergoing safety and efficacy testing, is not within the scope of the Regulation and may not, therefore, be the subject of a supplementary protection certificate.

A supplementary protection certificate granted for a product outside the scope of the Regulation as defined in Article 2 is invalid.

TRADE MARKS

ECJ - L'Oréal v eBay High Court reference L'Oréal SA and others v eBay International AG and others, Case C-324/09, 12 July 2011

The ECJ has given its judgment on the questions referred it by the High Court. The judgment has given a more restrictive interpretation than the Advocate General of Article 14(1) of the E-commerce Directive which exempts information society service providers from liability for unlawful acts hosted by them.

In May 2009, judgment was given in the High Court on part of the claim brought by L'Oreal against eBay, which raised two main questions: Is eBay liable for trade mark infringements committed by its users? Does eBay itself commit infringements by using trade...