In Short... Intellectual Property

Article by Mr Charters Macdonald - Brown, Mr Simon Chalkley and Mr John Reddington

GossIP

Lord Justice Jacob Now in the Court of Appeal

Perhaps it is a sign of the growing importance of design rights that Lord Justice Jacob's . rst case in the Court of Appeal related to a dispute over the design of an umbrella cover.

The case, Fulton v Totes Isotoner (UK), in which Jones Day acted for Fulton, was heard in October 2003 and judgment in favour of Fulton was delivered in November. Reported below.

Protection for designs in the EU has recently been extended with introduction of the new Community design rights. We look forward to seeing the extent to which those rights will be used by rights' owners.

At Last! The EC Copyright Directive Comes to the UK

Finally, nearly a year late, the implementing legislation for the EC Copyright Directive was submitted to the UK Parliament and came into force on 31 October 2003.

The new right of "making available to the public" will strengthen copyright owners' ability to control their copyrighted works on the Internet. The new provisions will crunch down on consumers using the DeCSS programmes to play DVDs on their computers. Also, the use of "modchips" to play computer games or DVDs imported from outside Europe will be under attack.

Civil and criminal remedies will be extended to cover previously permitted activities by consumers activities such as photocopying may require wider licences and extra fees to be paid to copyright owners.

The Case Against: The Federation for Information Policy Research (FIPR) claims that little has been done to stop copyright law being used to raise prices to consumers for items such as game console accessories or printer cartridges.

The Madrid Protocol and the EU

The EU moves closer to accession to the Madrid Protocol following the advice of a European Council working group on 19 September to endorse a European Commission proposal on accession. Also, other obstacles blocking the EU's accession to Madrid were removed on 25 September when members of the World Intellectual Property Organisation (WIPO) agreed on various technical amendments proposed by the EU to permit a combined use of the Community Trade Mark system in the Madrid Protocol. One of the main changes will be the insertion of an opt-back provision which will permit trade mark owners who designate the EU in their international registration to opt back to national designations if their EU designation fails.

Community Patent Gets Nearer

Following the meeting of the EU Council of Ministers Competitive Council on 3 March 2003, the European Community Patent looks closer to reality. Various political obstacles which have persisted for years have been overcome and it looks as if a single patent offering inventors one patent giving protection across the EU is now in sight. On 27 June 2003, a Presidency proposal for revision of the European Patent Convention to accommodate the Community Patent was sent to Council delegations. Some EU of. cials are saying that the new system will be operational before 2006. The deadline for establishing a central unitary court to be called the Community Patent Court, which will be based in Luxembourg, is 2010. This court will hear all Community Patent disputes with appeals to the European Court of First Instance.

New Streamlined Procedures in the UK Patent Courts

New Civil Procedure rules for patents and other intellectual property claims in the UK and a revised Patents Court Guide have come into effect this year. These will apply to the Patents Court and to the Patents County Court. There is great interest in the new streamlined procedure for determination of patent disputes under which all factual and expert evidence is in writing, there is no requirement for disclosure, no experiments, cross-examination is only permitted on any topic or topics where it is necessary and is con. ned to those topics and duration of the trial is . xed and will not normally be longer than one day. This procedure will exist alongside the more rigorous system traditionally associated with the UK courts so that parties have a choice: a cheap and quick system may be suitable for simpler, less valuable patents and smaller parties. For more complex and valuable patents, and where parties are more substantial, the old system remains available. Parties who want to use the new stream-lined system must . rst ask other parties to agree and then the court is likely to order it. If one party does not agree, an application has to be made to the court. Indications from the patent judges are that such applications are likely to be favourably dealt with by the courts.

We look forward to seeing how this system works in practice. We will report progress!

UK DESIGN RIGHT/COPYRIGHT

Lambretta Clothing Company Ltd v Teddy Smith (UK) Ltd & Next Retail plc [2003] EWHC 1204 Ch High Court

In a decision which will not go down well with designers in the fashion industry, the High Court has held that UK unregistered design right does not protect the...