Anheuser-Busch Inc brought an action in the Finnish courts to prevent Budejovicky Budvar from using certain marks that it claimed infringed its registered trade marks. On appeal to the Supreme Court, the action was stayed in order to make a reference to the ECJ on matters concerning the interpretation of the TRIPS Agreement.

The ECJ held that:

• TRIPS applied in the event of a conflict between a trade mark and a sign alleged to infringe that trade mark where that conflict arose before the date of application of TRIPs but continued beyond that date.
• The relevant provisions of Finnish trade mark law had to be interpreted, as far as possible, in the light of the wording and purpose of the relevant provisions of Directive 89/104 on trade marks and TRIPs.
• A trade name could constitute a sign within the meaning of the first sentence of Art. 16(1) of TRIPs. (Art 16(1) confers on the proprietor of a trade mark the exclusive right to prevent a third party from using such a sign if that use prejudices or is liable to prejudice the functions of the trade mark, in particular of guaranteeing to customers the origin of the goods.)
• The exceptions provided for in Art 17 of TRIPS were intended to enable a third party to use a sign which is identical or similar to a trade mark to indicate his trade name, provided that such use was in accordance with honest practices in industrial or commercial matters.
• A trade name which was not registered or established by use in the Member State in which the trade mark was registered could be regarded as an existing prior right within the meaning of the third sentence of Art 16(1) of TRIPs if the proprietor of the trade name had a right:
  • falling within the substantive and temporal scope of TRIPs;
  • which arose prior to the trade mark with which it was alleged to conflict; and
  • which entitled him to use a sign identical or similar to that trade mark.

The full judgement for the above case may be viewed at:

http://curia.eu.int/jurisp/cgi-bin/form.pl?lang=en&Submit=Submit&docrequire=judgements&numaff=c-245&datefs=&datefe=&nomusuel=&domaine=&mots=&resmax=100

The proposed legislation would implement, within the EU, a WTO decision which permitted the grant of compulsory licenses for the production of patented medicines for export to "countries in need". (Currently, most national laws only provide for compulsory licensing where the goods are predominantly for the supply of the domestic market.)

As a prerequisite for the grant of a compulsory license the destination country would have to notify the WTO that it was seeking the medicine to be covered. Companies wishing to manufacture such medicines could then apply to the authorities for a licence to do so.

In order to protect patent holders (and to ensure that the medicines reach their target destination) the re-importation of the goods would be prohibited. Customs authorities would have powers to prevent re-importation, patent holders could use existing national procedures to enforce their rights and, in the event of breach, the licence could be terminated.

The Regulation, can be viewed at http://www.europa.eu.int/comm/internal_market/en/indprop/patent/index.htm

The term PSRE covers a broad range of public sector organisations that undertake research either as their main objective or as a subsidiary activity to support their core aims. Examples of such institutions are: Research Council Institutes, government laboratories, NHS Innovation Hubs and major museums. The best practice document seeks to help PSREs, and their parent departments, to develop their knowledge transfer activities through highlighting examples of best practice in disseminating knowledge to the wider economy.

The document can be viewed at: http://www.ost.gov.uk/enterprise/knowledge/KTP_CaseStudies.pdf

On 21 October 2004, the Court of Appeal gave judgement for Celltech, dismissing MedImmune's application for a stay of the claim against it. The claim concerned the payment of royalties under a licence agreement, clause 13 of which conferred jurisdiction relating to questions of liability on the English courts. It was held that the underlying sense of Clause 13 was to select a jurisdiction with a specialist, experienced court that could determine all issues of infringement in relation to patents from many different jurisdictions.

The parties had entered into a licence agreement whereby MedImmune was to pay royalties for products sold or manufactured that would, but for the licence granted, infringe Celltech's "Adair" patents. Clause 13 of the agreement conferred jurisdiction relating to questions of liability on the English courts. Celltech alleged that MedImmune infringed its US "Adair 2" patent and that MedImmune was liable to pay royalties under the licence agreement. MedImmune commenced proceedings in the US for declarations that US Adair 2 was invalid and the manufacture and sale of their product "Synagis" did not infringe it. Celltech then applied to the US court to decline jurisdiction over the claim for a declaration of non-infringement, and brought proceedings against MedImmune in England.

It was held that clause 13 of the licence agreement conferred jurisdiction on the English courts to determine any issues relating to the performance of the agreement. In determining whether any royalties were payable to Celltech there would be no difficulties for the English courts in applying the appropriate foreign law in respect of the scope of a foreign patent. When the parties negotiated to give jurisdiction to the English court, they were fully aware of the fact that the validity of the patents could only be tried in the courts of the relevant countries of the patents. Furthermore, there was only a very remote possibility of different constructions of the claim in both the UK and the US, as Celltech did not intend to advance different constructions in each country and a US court would not depart from an English court's decision on construction.

The Appeal was dismissed. The full judgement is available form the Court Service website at: http://www.courtservice.gov.uk/View.do?id=2856

Regulation No 1383/2003 introduced common rules with a view to prohibiting the entry, release for free circulation, exit, export, re-export or entry for a suspensive procedure of counterfeit and pirated goods, and to dealing effectively with the illegal marketing of such goods without impeding the freedom of legitimate trade.

The Regulation establishes the natural and legal persons who may represent the holder of certain intellectual property rights (or any person authorised to use the right). It specifies the nature of the proof of ownership of intellectual property required when making an "application for action" to the customs department; and provides a standardised version of the form to be used when making such an application. The Regulation defines the type of right-holder liability declaration which must accompany an application for action and specifies when the time periods laid down in Art.13 of Regulation No 1383/2003 commence.

The Regulation entered into force on 30 October 2004 (the date of its publication in the Official Journal of the European Union) and Article 11 provides that it shall apply from 1 July 2004.

The Regulation may be viewed at: http://europa.eu.int/eur-lex/lex/LexUriServ/site/en/oj/2004/l_328/l_32820041030en00160049.pdf

The above declaration by Novell Inc was made in an attempt to reassure purchasers of its open-source software such as the Suse Linux operating system and Ximian desktop software, following claims by the SCO group that Linux kernel violates its intellectual property.

The possible vulnerability of open-source software was highlighted in an August study, funded by the insurance provider Open Source Risk Management LLC, which suggested that 283 registered software patents could conceivably be used as the basis for lawsuits against the Linux kernel.

Novell's statement of patent policy follows similar declarations from open source providers IBM Corp. and Red Hat Inc. Bruce Lowry, a Novell spokesman, commented that "Novel is in a unique position to defend its open source software because, with 411 patents in its portfolio, it has far more patents than other open-source providers".