Spring 2004



Community patent may be finalised under Irish Residency

For many years companies in Europe have lobbied for a community patent similar to the community trademark. The European Commission has recently made progress in the matter by adopting two proposals for a Council Decision aimed at establishing a community patent.

Currently disputes in national patents or in European patents granted by the European Patent Office with effect for individual member states are decided by the courts of the respective member states. Consequently if an interested party wishes to bring an action for infringement of a patent or to contest the validity of a patent they may be required to bring legal action in a number of member states. The procedure is expensive as it involves retaining lawyers in different member states undertaking essentially the same litigation in each member state. Problems have also arisen as courts in different member states may interpret patent law differently and reach incompatible verdicts. The establishment of a Community Patent court would greatly help to deal with the inefficiencies and costly aspect of the current patent system. The new community patent will exist alongside the European patent and an applicant can choose between the two systems in accordance with what best suits their needs.

Under the proposals the community patent court would operate according to a single set of procedural rules, with a uniform case law. It aims to ensure that costs are affordable for users and in particular small to medium sized enterprises. As a result the proposed regime would ensure that disputes over community patent rights were judged with EU wide effect by a single centralised and specialised court. It is also proposed to set up a specialised chamber within the Court of First Instance to hear appeals against the community patent court judgments. In exceptional cases a decision of the Court of First Instance could be subject to review by the European Court of Justice.

In March 2003 the Council reached broad political agreement on the main trust of the Commission's proposal for a Regulation for Community Patent. However agreement has not been reached to date on the length of period under which translations of claims can be filed. The Irish presidency now intends to bring the matter back before the Council as soon as possible so that the entire regulation can be finalised.

Registration of Sound Marks

In a landmark decision in November 2003 the European Court of Justice ("ECJ") affirmed the registerability of sound marks. A Dutch company, Shield Mark sought to enforce its rights in two series of sound trademark registrations the first consisting of the opening melody of Beethoven's "Für Elise" and the second consisting of the sound of a cocks crow represented by the Dutch onomatopoeia "Kukelekuuuuu". A question was stated to the ECJ from the Netherlands Court as to whether sounds or noises were to be deemed registerable as trademarks within the meaning of Article 2 of the Trademarks Directive 89/104/EEC and if so how they should be graphically represented. The ECJ held that sounds may constitute trademarks provided that they are capable of distinguishing the goods and services of one trademark from those of others and can be represented graphically. The ECJ only gives limited guidance on how the sound mark should be represented graphically as is required in order to be registered as a mark. According to the ECJ a musical score, including the clef, the notes comprising the melody and their time value, satisfies the graphical representation requirement. However simply indicating the letter names of the melody notes is insufficient as is stating the title of the melody. The court did not comment on whether sound recordings and/or digital recordings are adequate graphical representations of sounds. The difficulty with registering a sound as a trademark is and has been that even if it is permitted by statute registration of sound marks maybe frustrated by the practical difficulties of sufficiently describing such marks so as satisfy local trademark offices.

118118 Advertisement - Athlete threatens personality rights action

In a recent article in our bulletin we detailed the successful English High Court action by Eddie Irvine against radio station Talk Radio (now TalkSport) in March 2002. Talk Radio had manipulated a picture of Irvine with a mobile phone to look as if he was listening to Talk Radio. Talk Radio had neither sought nor obtained Irvine's permission for the advertisement and the court held that TalkSport's use of Irvine's picture amounted to a false endorsement of the radio station. The Irvine case was important as it established the existence of a "personality right" in English law. A personality right is the distinct right of a personality to exploit his or her image and consequently to sue any party for any unauthorised exploitation of that image. There is no such cause of action established yet under Irish law although this may change as English law has persuasive effect in the Irish Courts.

A similar action looks likely following a ruling by the Content Board of the British regulatory body Ofcom which deals with television advertisement and complaints. In launching its new directory enquiry services, 118118 operated by The Number, used an advertisement featuring two runners with 1970s hairstyles and moustaches wearing distinctive clothing running along the street. Mr David Bedford claimed that the adverts were using his image to promote their product without his consent. David Bedford was a record breaking 5,000 and 10,000 metre runner in the 1970s. His career peaked in 1973 when he became famous for breaking the 10,000-metre world record.

The Content Board of Ofcom held that the 118118 runners featured in the advertisement did caricature David Bedford by way of a comically exaggerated representation of him looking like he did in the 1970s, supporting a hairstyle and facial hair like his at the time, and wearing running kit almost identical to the running kit that was distinctively worn by him at the time, including red socks, sky blue shorts with gold braiding and a vest with two hoops. In running the advertisement Ofcom held that The Number had breached the British Advertising Standard Code which stipulates that with limited exceptions living people cannot be betrayed, caricatured or referred to in advertisements without their permission. There is a similar provision in the Code for Advertising Standards in Ireland. The Content Board decided not to ban the advertisements however as Mr Bedford had delayed six months before taking a complaint about the advertisements and it held that no evidence had been produced that Mr Bedford had suffered actual financial harm as a result of the caricature. Ofcom held that to ban the advertisements would be "disproportionately damaging" to The Number. Mr Bedford is reportedly considering using the ruling to support a lawsuit against the company for a false endorsement. It will be an interesting one to watch if he does, as Mr Bedford does not have a high public profile public or an endorsement career so it may be difficult for him to prove he has sufficient "reputation" for an action to succeed.

Budget - No More Tax on IP Transfers

In addition to introducing a research and development tax credit for incremental research and development expenditure by companies, the Minister for Finance outlined in the Finance Bill 2004 that stamp duty shall not be chargeable on an instrument for the sale, transfer or other disposition of intellectual property. In addition where stamp duty is chargeable on a legal instrument and part of the property consists of intellectual property then stamp duty is only to be assessed on that part of the consideration which is attributable to such of the property as is not intellectual property. In other words the chargeable consideration is to be apportioned. The definition of intellectual property in the Finance Bill 2004 includes any patent, trademark, registered design, design right, invention or domain name, any copyright or related right within the meaning of the Copyright and Related Rights 2000, any supplementary protection certificate, any plant breeders rights, any application for the grant or registration or licence of any of the foregoing and goodwill to the extent that it is directly attributable to any of the foregoing.

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