IP & Technology News, 28 October 2008

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...