Archive for the ‘Trade marks’ Category

Image rights / trade mark rights: Michael Jackson’s family threaten trade mark infringement proceedings against counterfeiters

Thursday August 6th 2009, by Piers Strickland

According to the Associated Press and as reported by the IPKat, the estate of Michael Jackson is planning to tackle those who are selling merchandise which is not authorised by Jackson’s estate (presumably by way of threatening trade mark infringement proceedings in the US and elsewhere).

In the UK, the main way in which a famous individual can control merchandise is to attempt to register their name and/or likeness as a registered trade mark.

However, there are a few hurdles which lie in the way of such trade mark applicants. First, the trade mark application in question must be able to designate trade origin. Some English judges have been sceptical whether customers really care whether merchandise (such as a t-shirt with Michael Jackson’s photograph on it) is authorised by the celebrity or not. As such, there is doubt as to whether such trade marks are acting to “designate trade origin”. This was one of the objections when the estate of Elvis Presley tried to register various ELVIS trade marks in the UK: Elvis Presley Enterprises Inc. v Sid Shaw Elvisly Yours [1999] RPC 567.

Secondly, some celebrities have had trouble convincing the relevant trade mark registries that their names are distinctive enough to merit trade mark protection. The band Linkin Park had trouble in this respect before the trade mark registry.

Alex Ferguson also had trouble registering his name as a trade mark in respect of goods which were mere “image carriers”. Again questions of distinctiveness, in terms of trade mark law, were at issue. Ferguson’s legal team made an intriguing argument that such a rejection amounted to a breach of Ferguson’s human rights, i.e. he had a human right to register his name as a trade mark. Unfortunately, in terms of providing clarity for trade mark law, this argument never made it to the European Court of Justice for due consideration.

CONCLUSION: Although trade mark registrations may be hard to obtain in certain respects for celebrities, that is not to say it is not worth trying. If celebrities wish to try and exploit and control merchandising, and to prevent unauthorised merchandising (i.e. by way of threatening trade mark infringement proceedings) then obtaining registered trade mark rights of some description is likely to be very important.

The trick is making the right trade mark applications and at the right time. The ELVIS case showed that if a celebrity or their estate delays, then the chance of the relevant trade mark being non-distinctive through dilution may increase. This may thwart crucial future trade mark applications.

New proposals to cut the cost of intellectual property litigation in the UK

Tuesday August 4th 2009, by Piers Strickland

The cost of running intellectual property ligation (i.e. litigation concerning patents, trade marks, designs, copyright etc) in the UK can often run into millions. As a result, many SMEs are effectively barred from engaging in intellectual property litigation. This is a serious issue as it constitutes a barrier to SMEs having access to justice.

A new set of proposals by some of the leading individuals involved in intellectual property law, the Intellectual Property Court Users’ Committee, has set out to try and reduce this injustice and produced a report.

The report points out that the (London) Patents County Court has failed in one of its key aims: to offer a more cost-effective alternative to litigating intellectual property rights in England and Wales, as opposed to the High Court in London. There are several proposals made by the Intellectual Property Court Users’ Committee, but one of the most significant is the proposal to limit costs recovery from the losing party from £25,000-£50,000 for intellectual property litigation.

If the government acts upon the proposals of the Intellectual Property Court Users’ Committee and make such proposals legally binding in terms of the Civil Procedure Rules, then this might go a significant way towards making legal proceedings in the UK more affordable, in the way in which other countries have already provided for.

As such, the proposals have the support of Strickland LLP, which is committed to providing IP litigation services to range of companies, from SMEs through the large blue-chip companies.

Trade Mark Law Update: Can you register as a trade mark the shape of a Mars bar?

Monday August 3rd 2009, by Piers Strickland

According to the European Court of First Instance (CFI), you can’t.

The CFI held that the shape of the Mars was too common and non-distinctive to be registrable as a trade mark in the EU.

The CFI commented that the “rounded chevrons” on the top of the Mars bar would be seen to be decorative, rather than a “badge of trade origin” – which is a pre-requisite of being registrable as a trade mark in the UK / EU.

COMMENT: Shapes are potentially registrable as trade marks, but owners will often face a tough struggle proving that such shapes are distinctive enough to deserve being given protection as registered trade marks. The CFI, and other trade mark arbiters, are also keen to prevent any one trader from having exclusive trade mark rights over a shape which other traders will want / have to use as well. In other words, the authorities are always trying to prevent generic items being trademarked. However, that will not stop the likes of Mars continually try to chip away at the trade mark authorities, to further protect their brands.

This is because additional trade mark registrations normally equate to a stronger and more valuable brand for the owner.

Trade mark litigation – the importance of instructing a specialist trade mark litigation lawyer

Wednesday July 29th 2009, by Piers Strickland

When I am acting for a client and the other side has instructed a lawyer who does not understand trade mark law or is handling the dispute themselves in-house with no specialist trade mark law experience, then, in tennis terms, I always feel it is 40-0 to my client, on serve.

Trade mark litigation is not an area for a non-specialist, as trade mark law is a specialist area requiring a broad experience of handling a range of trade mark disputes through the courts.

Set out below are some of the traps for the inexperienced lawyer dabbling in trade mark disputes / litigation:

1. Beware a threats action. Section 21 of the Trade Marks Act 1994 gives the right to any person aggrieved by a groundless / unjustified threat of trade mark infringement. Therefore, if you send out an unjustified threat of trade mark infringement (such as by way of a cease and desist letter / letter before action), then you, the trade mark owner, may find yourself as the defendant in a trade mark litigation action. Not the best way to start a trade mark enforcement programme…

2. Think about other intellectual property rights. Intellectual property law encompasses a myriad of different intellectual property rights. You want to make sure that you are enforcing the correct intellectual property rights. Think about and take specialist advice on unregistered trade mark law (passing off), copyright, design rights, confidential information, patents etc.

3. Consider building up your registered trade marks (and other intellectual property rights) portfolio before writing to the other side in a trade mark dispute. It may often be better to get your house in order before firing off a letter alleging trade mark infringement.

4. Consider the position in other jurisdictions. Even if you have a strong case for trade mark infringement in the UK, do you have operations in other countries, or an intention to expand internationally? How will a trade mark dispute in the UK affect the trade mark position internationally? What is your intellectual property / trade mark position outside the UK? For example, could the other side cause you problems in the future outside the UK in respect of intellectual property infringements?

5. Consider how you are going to pay for trade mark infringement / litigation proceedings if needs be. (Strickland LLP can help here as our fees are much more competitive than our competitors at BigLaw).

6. Make sure you get the first letter to the other side right. This is important, not only for creating the right impression on the other side, but also to create the right impression on the ultimate audience, the court. Poor letters before action for trade mark infringement and other intellectual property infringement matters can have costs consequences later on in the litigation.

7. Think laterally about the settlement agreement. If you reach a settlement with the other side, i.e. you avoid having to go through a round of litigation and attend court hearings, or at least you bring the litigation to an early end, then make sure the settlement agreement is sufficient for your needs, whether you are the claimant or the defendant. One of the most annoying situations for a client is to spend a lot of money on an intellectual property dispute / piece of intellectual property litigation, only then not to fully exploit their bargaining position by virtue of poor drafting in the final version of the settlement agreement.

The above just gives a flavour of the inherent complexities in trade mark litigation and other forms of intellectual property litigation.

Trade Marks Disputes Regarding New Company Names – The Company Names Tribunal

Friday July 17th 2009, by Piers Strickland

Companies who wish to protect their brands which subsist in their actual company names now have another option when there is such an opportunistic application for a new company name: they can make an application to the Company Names Tribunal (an adjunct to the UK’s intellectual property office – which manages the UK’s trade mark register).

COMMENT: Such an application costs an initial fee of £400. As such, this should prove to be a potentially cost-effective method of addressing nuisance trade mark disputes / issues arising from the register of companies. Certainly the cost will compare very favorably compared to using the courts to issue trade mark infringement proceedings.

However, one point to note is that if the new company name application at issue is not opportunistic, then an application should be made to Companies House, rather than the Company Names Tribunal,

Further information about the Company Names Tribunal can be found on http://www.ipo.gov.uk/cna.htm.

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