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In the first case over a .jp domain name, the Toyama District Court has ordered a website to be shut down for infringing a famous name. John A Tessensohn examines the decision

New decisions and rulings on domain names are coming thick and fast from Palestine to Belgium. The past month has seen some significant amendments and cases. MIP rounds up some of the latest domain name developments. US: www.vw.net Volkswagen won the right to the domain name vw.net. Virtual Works of Virginia registered VW.NET in October 1996, but Volkswagen claimed the use constituted infringement and dilution of its mark. Virtual Works filed a civil lawsuit to block an attempt to reassign its domain name claiming that .net was for networking operations, not automobiles. In February 2000 a court ruled that the car maker was entitled to the name as Virtual Works had attempted to sell the domain name to Volkswagen which was a violation of the 1999 Anticybersquatting Consumer Protection Act. A three-judge panel upheld this decision on January 22 2000.

The year 2000 saw important progress regarding both the Community Patent and the European Patent Convention. Neil Jenkins reviews the developments and looks forward to further changes

For copyright owners, news from Hank Barry, Napster´ s CEO, that there are more than 200 million multimedia PCs worldwide with the capacity to copy an MP3 file, and that Napster´ s software has been downloaded and installed 57 million times, will make grim reading. Except that is for copyright owners in France. French authorities are planning to put levies on the sales of computers and digital recording devices as a means of compensating musicians and film-makers against pirate copying. The taxes on recordable CDs, DVDs and mini-discs went into effect on January 22. A 420-minute recordable DVD faces a Ffr57.7 ($9) levy, most of which will go directly to the artists and producers.

With TRIPs compliance, legislative reform and a booming technology market, 2000 was a busy year for patent owners in the emerging markets. MIP writers reveal the results of our annual survey and profile some of the interesting stories from the past year

Todd Dickinson´ s two-year stint as head of the US Patent and Trademark Office ended on Saturday 20 January, following George W Bush´ s inauguration. He was immediately hailed as one of the most successful Commissioners in recent times. Dickinson oversaw a 70% increase in patent applications; a 200% rise in the number of trade mark applications; a complete restructuring of the agency´ s management team; and an increased number of patent and trade mark examiners. It was a busy two years. "He did a marvellous job," says Michael Heltzer, government relations manager of the International Trade Mark Association (INTA). "He totally understood the role of the PTO in safeguarding America´ s ideas, something which his predecessors did not." Michael Kirk, executive director of the American Intellectual Property Law Association (AIPLA) agrees: "Dickinson dedicated a lot more effort to the actual running of the office than his predecessor Bruce Lehman, putting more emphasis on processing applications and the quality of patent examinations, which are critical to the office."

In an unexpected turnaround, on December 26 2000, the Clinton administration killed a proposal to allow imports of low-priced prescription drugs into the United States. Congress abandoned the controversial plan on the grounds that it would be unsafe and would not achieve its aim of providing the public with cheap drugs. Describing the proposal as severely flawed, Donna E Shalala , secretary of health and human services, echoed the concerns of pharma companies who believed that without sufficient funding and strict regulations, the plan would have had a devastating effect on public safety.

This month´ s cover story tackles the thorny question of what constitutes fair advertising. Clothing company Benetton has built its reputation by shocking and surprising consumers with pictures depicting natural disasters, illness and danger. Its tactics have led to complaints from the public and regulators, with authorities in some countries banning particular adverts. In Germany, the picture of an oil-encrusted duck was held by the Federal Supreme Court to be offensive under the Unfair Competition Law. Following a five-year legal battle, in December the Federal Constitutional Court overturned this ban. The decision gives a green light to advertisers (companies and charities) to use provocative images in their advertising in Germany, previously one of Europe´ s more restrictive markets.

On November 29 2000, a majority of the United States Court of Appeals for the Federal Circuit, sitting en banc, rendered an opinion in Festo Corp v Shoketsu Kogyo Kabushiki Co, published at 56 USPQ 2d 1865, which effectively extinguishes the application of the doctrine of equivalents to any term of a patent claim that was narrowed by amendment during its prosecution before the US Patent and Trademark Office (USPTO). While the majority opinion does purportedly limit the prosecution estoppel created by amendments that narrow a claim in any respect to those amendments made for reasons "related to patentability" , that opinion is also unequivocally clear in holding that any narrowing amendment to a claim term made for "any reason affecting the issuance of a patent" (56 USPQ 2d at 1870-1871) is "related to patentability" whether made voluntarily or in response to a rejection. Specific mention is made of amendments made for reasons based on 35 USC § § 101 and 112, as well as for prior art reasons based on 35 USC § § 102 and 103 as giving rise to prosecution estoppels and thus foreclosing application of the doctrine of equivalents to amended terms or expressions in claims. The majority opinion leaves an apparent escape hatch from estoppel for narrowing claim amendments made for reasons other than patentability, provided each such reason is stated in the prosecution record at the time of the narrowing amendment but this is of very little practical effect because reasons for narrowing amendments to claims that do not somehow implicate patentability are extremely hard to conceive of, much less substantiate. The majority opinion is explicit in holding that: "When a claim amendment creates prosecution history estoppel with regard to a claim element, there is no range of equivalents available for the amended claim element. Application of the doctrine of equivalents to the claim element is completely barred" (56USPQ2d at 1872).

The Federal Patent Court recently acknowledged the principal registrability of a new kind of trade mark, a so-called "positioning mark" (see for instance BPatG 28W (pat) 66/99 Positionierungsmarke). With this new kind of trade mark, signs such as single letters or exclamation marks, which are otherwise considered not to be registrable, may be registered, if the following minimum requirements are fulfilled: The sign appears on a specific part of the product, eg a jeans pocket or the flank of a tennis shoe. It appears always at the same place of said part of the product. It appears in a constant size (absolute or relative to the size of the goods). It exhibits a particular colour contrast with respect to the goods labelled with the positioning mark. Therefore, in an application for a positioning mark the definition of the carrier (the goods onto which the label is affixed), the position of the sign on the carrier as well as its size of must be given. It is further advisable to give a short description of the mark.