Ireland IP & Technology Law Blog : Dublin Lawyers & Attorneys for Intellectual Property, Communications & Information Technology Law in Ireland, U.S. & England

The ECJ has ruled that Lego’s 2 x 4 red brick logo is not registrable as a Community Trade Mark due to the fact that all the essential characteristics of the Lego brick perform a technical function.

OHIM, the European Trade Mark Office, originally cancelled the registration of Lego’s famous red brick back in 1999 after Lego competitor Mega Brands requested its cancellation. Mega Brands argued that European trade mark law precluded the registration of "any shape which performs a function from trade mark protection". Lego appealed the decision to the Court of First Instance and then further to the European Court of Justice.

It appears that the ECJ was influenced in its ruling by the public interest consideration in ensuring that companies cannot use trade mark law to secure a monopoly over technical solutions. The ECJ decision indicates that obtaining a Community Trade Mark for product shapes could potentially be problematic for businesses.

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Congratulations to the two winners of Your Country, Your Call, Neil Leyden and father and son duo Colm Mac Fhlannachadha and Cianán Clancy. The two proposals will now go into a development phase and each will be supported by an advisory group and a development fund.

Neil Leyden's global media hub proposal was the first winner to be announced. The proposal sets out to create an Irish Content Industry Association which would then drive the development of a cultural and creative quarter. A media park would be established to attract global content industries. Employment in the region of 45,000 jobs is envisaged by the proposal.

The data island strategy proposed by Cianán Clancy and Colm MacFhlannachadha involves developing green “mega data centres” and developing an international innovation area. The plan aims to place Ireland in a world leading position in areas such as cloud computing, secure information storage and online gaming development. It is believed that the strategy could generate at least 4,000 new jobs.

These ideas are highly innovative and ones that Ireland needs to pursue to remain competitive on the international stage, and to differentiate ourselves with specific advantages in this field. We look forward to seeing them move to the next stage!

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It is interesting to read that the two winners of the Your Country, Your Call competition launched by President Mary McAleese last February will be announced this evening (Friday).

 Congratulations to finalists Neil Leyden (Ireland as a Global Media Hub), Gordan Hyland (an Irish IP financial securities market), Peter Kavanagh (a Solar PV Electricity Generation), Cianán Clancy and Colm MacFhlannachadha (The Data Island Strategy) and Brody Sweeney (a “Superbrand” to market Irish Tourism & Food).

 A&L Goodbody wishes them all the best of luck!

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Following the launch today of a new “Places” feature, Facebook users in the UK have the ability to track friends’ whereabouts. “Places” is a tool that has been developed to help Facebook users share where they are, find out who is in the same vicinity and discover services and events in the area.

“Places” will be accessible either from Facebook’s mobile version or via an iPhone app that Facebook has designed. Users will be able to log in and broadcast their whereabouts and their location will then appear in their status update.

People can also tag their friends when checking into a location. Every time anyone is tagged, they will be notified and will have to choose whether to accept or not.

“Places” has launched in the US and Japan and the service will soon be rolled out to the rest of Europe.

This will inevitably give rise for data protection issues in Europe, as data protection offices across Europe take stock – we will keep the Blog updated on developments!

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An interesting recent decision of the Supreme Court of England found that, although parties to a supply arrangement had not signed a final written contract, a binding agreement had come into force.

In the RTS Flexible case the English Supreme Court found that an agreement had come into effect on the basis of a letter of intent, even though it was expressed to be "subject to contract".

Lord Clarke commented in the case:

"The different decisions in the courts and the arguments in this court demonstrate the perils of beginning work without agreeing the precise basis upon which it is to be done. The moral of the story is to agree first and to start work later."

The case highlights the need to reach agreement before work commences, put interim arrangements in very clear terms, setting out what work is to be done, for what price and for what period. The Irish courts are likely to follow the principles applied by the English court, but of course, cases of this kind often turn on their facts - the important point is to be as upfront and express as possible about the non-binding nature of any pre-contract engagement.

A link to the judgment can be found here.

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The ECJ has dismissed an appeal brought by Akzo Nobel Chemicals Ltd and Akcros Chemicals Ltd against the General Court judgment denying the application of legal professional privilege to communications with in-house lawyers in the context of a competition investigation by the European Commission.

Legal professional privilege will no longer cover exchanges with in-house lawyers within a company or corporate group in competition matters and in-house lawyers will now need to exercise even more caution when sending communications within a company.

For more on this topic, click here.

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The English High Court has held that the term "perpetual" has "different shades of meaning" in the context of a software licence. The parties in this case had entered into a licence agreement and a support agreement (required by the licence agreement), which were later amended by a variation agreement stating the licence would be "extended [to a] perpetual licence." The licensee terminated the support agreement but claimed the licence agreement continued, because the grant of the perpetual licence in the variation agreement meant that relevant termination clauses in the licence agreement were superseded.

The Court said that while "perpetual" can mean something that is "never ending (in the sense of incapable of being brought to an end)", it can also mean that a thing is "of indefinite duration, but subject to any contractual provisions governing termination". In this case, the Court held that the latter meaning applied.

While one might assume "perpetual" means forever, the case makes it clear that the courts may not always agree!

A link to the judgment can be found here.

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Good news emerged from the World Intellectual Property Organisation (WIPO) this week in the form of a report detailing a recovery in the demand for IP rights and an increase in innovative activity. The report, entitled World Intellectual Property Indicators 2010, also documents how the economic slump resulted in a drop in demand for IP rights, and caused companies to adjust their innovation strategies.

The future however looks good and according to the report, patent applications filed under the Patent Cooperation Treaty (PCT) and international trademark registrations filed under the Madrid system have returned to growth.

Read the report here: www.wipo.int/ipstats/en/statistics/patents/

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A new agreement governing the wine trade between Australia and the European Union entered into force recently (replacing an older version signed in 1994). The new agreement gives full protection to EU geographical indications which prevent the use of certain names on wines (and goods in general) unless the wines are produced in the region indicated by that name. 

 Australian wine producers will be obliged to phase out use of important EU names such as "Champagne", "Port", "Sherry" and other European geographical indications, along with other traditional expressions such as, "Claret" from 1 September 2011.

The protection of geographical indications as described above has been in force in the EU for some time. The agreement with Australia will come as a timely boost to European wine producers who have seen their world market share impacted in recent years by the growing sales of "new world" wines.

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Recently the UK Advertising Standards Authority (ASA) announced that the scope of the CAP Code (a set of rules setting down standards for advertising) will be extended to a company’s own website and other non-paid-for online space which is controlled by a company.

The CAP Code currently covers sales promotions (wherever they appear), and other marketing communications are only covered if they appear in paid-for online space (such as banner and pop-up advertisements or keyword advertising on search engines).

The decision to extend the code was in response to a formal recommendation from a wide cross-section of UK industry. The limited scope of the Code was considered inappropriate due to the increased use by organisations of their own website and other non-paid-for space online, such as social networking sites. There have also been increased complaints about such websites and it was felt there was a need to protect children and other vulnerable individuals in the digital environment. UK companies have six months to ensure that their websites and other online space under their control comply with the code.

The Advertising Standards Authority for Ireland (ASAI) currently monitors the contents of companies’ websites. However it remains to be seen if the scope of the ASAI Code (the Irish equivalent to the UK CAP Code) will be extended to social networking sites.

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The eagerly awaited Advocates General of the ECJ’s opinion on the proposed single European patent system and European Patents Court (EEUPC) has recently been published.
In June 2009, the Legal Service of the Council of the European Union had requested the opinion of the ECJ on the compatibility of the proposed unified patent system with the EU Treaties. The Opinion now, in a surprise to many, firmly rejects the legality of the proposed system:
“as it stands at present, the envisaged agreement creating a unified patent litigation system is incompatible with the treaties”.

The Advocates General highlighted four areas as being particularly incompatible with the EU treaties:
1. the insufficient guarantees of the pre-eminence of EU law;
2. the insufficient remedies for infringement of EU law under the EEUPC system;
3. the linguistic system adversely affecting defendants; and
4. the draft agreement establishing the unified patent litigation system not ensuring effective judicial control nor a means of correct and uniform application of EU law.
 

                     The ECJ is due to give its formal decision before the end of the year.

The Advocates General’s opinion is non-binding and therefore it remains to be seen whether the ECJ will concur with the opinion or reach a different conclusion with regards to a unified patent system in Europe. If rejected by the ECJ, it may be a case of back to the drawing board for this very difficult patent law policy initiative.

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The German Government has presented a draft law governing workplace privacy.  The bill includes a proposal which restricts prospective employers from viewing Facebook profiles of potential candidates and would make it illegal for them to become a Facebook friend with an applicant in order to view their private postings.

Facebook has about 10 million users in Germany and there are currently no rules in place that regulate the use by companies of Facebook data.

Under the bill, employers would still be permitted to conduct a search for publicly accessible information about prospective employees on the internet. They would also be entitled to access information on job networking sites (as opposed to purely social networking sites) such as LinkedIn.

The German Interior Minister acknowledged that some of the new regulations might be complicated to enact and stated that if an employer turns down an application from a potential employee it might be difficult to prove that the reason for doing so was on foot of the content of Facebook postings.

The penalties proposed under the bill are substantial: A rejected job applicant who proves they have been rejected for a position based on violation of the new law could take a company to court claiming damages and fines of up to €300,000 could be imposed on employers that become friends with prospective employees in order to glean personal information from their postings.

Peter Schaar, the German Commissioner for Data Protection and Freedom of Information, endorsed the proposal stating it was “a substantial improvement on the status quo in dealing with employees’ data”. That may be the case, however it is difficult to see how this new law will be enforced.

The bill will go to the German Parliament to be debated when we will see how it develops. There are no similar proposals in Ireland but it is interesting to see how other EU countries are tackling this issue - if it succeeds there will no doubt be a political will for similar protections in Ireland.
 

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