Archive for the ‘Trade marks’ Category

James Bond’s “owners” fail in Dr No trade mark case

Friday July 3rd 2009, by Piers Strickland

In a recent case before the European Court of First Instance (CFI), the CFI rejected an opposition from Danjaq LLC to an application from a third party to register the words Dr No as a Community Trade Mark (CTM), in respect of items such as bags, beer, clothing etc.

Crucially, the CFI held that: “the signs Dr. No and Dr. NO do not indicate the commercial origin of the [James Bond] films, but rather their artistic origin”. In doing so, the CFI was making an important distinction about the function of registered trade marks, which exist to designate trade origin for goods and services emanating from the trade mark proprietor in question.

By way of contrast to trade mark rights, copyright protects in an entirely different way; copyright protects the creativity invested in certain works, such things as artistic and literary works. The CFI went on to hold that: “the same sign [i.e. Dr No] may be protected as an original creative work by copyright”.

My view is that the words “Dr No” would not be likely to be protectable under the English copyright law, as they would be considered de minimus, i.e. there is too little there to justify copyright protection. A claim under the English law of passing off to restrain the unauthorised use of the get-up DR NO would also be difficult, if the English Courts took the same view as the CFI that the words DR NO did not identify or trade off the goodwill of the owners / makers of James Bond, but rather just indicated use of the trade mark on unrelated products.

Ambush marketing – staying on the right side of the posts

Thursday July 2nd 2009, by Piers Strickland

Some things are plainly wrong, like trying to gouge the eyes out of your opponent. Other issues are much more of a grey area.

One contentious issue which is bound to receive a lot of coverage, particularly as the 2012 Olympics approach, is the issue of “ambush marketing”. This is the technique of trying to associate a brand with a large event (such as the Olympics or the British Lions Tour of South Africa).

An interesting recent complaint before the Advertising Standards Agency (ASA) was a complaint that the makers of London Pride beer (Fullers) had gone too far in suggesting a link with the English Rugby Team. On one of its adverts it had the slogan: “SUPPORT ENGLISH RUGBY” and made other references to rugby. The Rugby Football Union (RFU) objected to this advert on the basis that it implied that there was an official affiliation between the RFU and Fullers (when in fact the RFU had already signed up a competitor of Fullers to be their “official beer”).

In its decision the ASA did not uphold the RFU’s complaint on the following basis:

The ASA noted the specific features that official sponsors were likely to include in their advertising, such as the claims “official partner” or “official sponsor”, were not included in the ad. We considered that readers were unlikely to be misled into thinking that Fullers were an official sponsor or partner of the England rugby team. They would expect an advertiser to state if they were an official sponsor and the ad did not claim that Fullers were. We also considered that the text “SUPPORT ENGLISH RUGBY” was not misleading, because Fullers did support English rugby as a sport and had done for several years. We concluded that the ad was not misleading and did not take unfair advantage of the reputation of the England rugby team.

Perhaps the RFU would have had a better case if it had registered ENGLISH RUGBY as a trade mark, particularly in view of the recent case of L’Oréal v Bellure as commented on in an earlier post.

Having registered trade mark rights might give you extra legal ammunition when considering your options in terms of tackling ambush marketing. Conversely, when considering an ambush marketing campaign, an analysis of the trade mark portfolio of the potential opponent might help keep the campaign out of further legal hot water. After all, there are some nastier things than a complaint to the ASA…

Significant trade mark / comparative advertising law victory for big brand owners

Tuesday June 30th 2009, by Piers Strickland

The European Court of Justice (ECJ) has recently handed down its decision in the long-running case of L’Oréal SA v Bellure NV.

The case emanated from the use of L’Oréal trade marks in a list of products that were not genuine L’Oréal, but which nonetheless used the L’Oréal trade marks for comparative purposes.

The key question before the ECJ was to decide when use of the L’Oréal trade marks in comparative advertising would be taking “unfair advantage” and therefore amount to an act of trade mark infringement under the European Directive on Trade Marks (First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks).

The ECJ held that a trade mark owner does not need to prove confusion and/or detriment in order to bring a claim for trade mark infringement for unfair advantage. Instead the ECJ held that unfair advantage could be obtained where:

“a party seeks…to ride on the coat-tails of the mark with a reputation in order to benefit from the power of attraction, the reputation and the prestige of that mark and to exploit, without paying any financial compensation, the marketing effort expended by the proprietor of the mark in order to create and maintain the mark’s image”.

This case represents a significant victory for big well-known brand owners, not just those with famous trade marks in the perfume / luxury goods sector. This decision means that big brand owners, who have trade marks with a significant “reputation”, will be in a much better position to take action against those third parties who use their trade mark in comparative advertising.

Can Andy Murray register his name as a trade mark?

Thursday June 25th 2009, by Piers Strickland

The answer is almost certainly, yes, in respect of certain goods and services in the UK.

The fact that Andy Murray hasn’t done so in the UK is probably due to the fact that his mind is more on winning Wimbledon, rather than designing a range of lovely underwear (Bjorn Borg™) or some lovely furniture (Agassi – Graf™). Fair enough really.

However, registering your name as a trade mark is an effective method of controlling third party use of your name and for merchandising purposes. Once Andy Murray hangs up his tennis racket(s), his thoughts may turn to designer underwear instead…

Major changes by UK Customs will impact upon intellectual property rights holders

Thursday June 25th 2009, by Piers Strickland

It has been reported by the IPKat that HM Revenue & Customs (“UK Customs”) has significantly departed from previous practice. UK Customs was previously prepared to detain allegedly infringing goods upon receipt of a witness statement from the intellectual property rights holder alleging infringement. Now, UK Customs is requiring intellectual property infringement proceedings to be issued.

UK Customs’ made the following statement:

“Our [previous] practice has been to seize these items accepting a witness statement from the right holder as confirmation that the goods are infringing and therefore liable to forfeiture. Should the owner disagree with this determination they have the right to challenge this through judicial proceedings.

We now accept that the burden of proof should be upon the right holder who must confirm the infringing nature of the goods by taking legal proceedings. More pertinently any proceedings must ordinarily be instituted within ten working days but no later than twenty working days after notification of detention. Right holders must therefore be prepared to institute proceedings within the time period set out in the Regulation. Goods will be seized only if the right holder gains a successful judgment and we are directed by the court to seize the items in question.“

UK Customs has defended these changes on the basis that they are needed to comply with Article 13 of Article 13 of Council Regulation 1383/2003, which has been implemented into the UK via SI 2004 No. 1473.

This is a blow for intellectual property rights holders, as UK Customs had been a very effective (and cheap!) way of acting against infringements coming into the UK.

However, no doubt some rights holders may have been over-using UK Customs in this respect. This may be another reason why UK Customs felt that the balance needed redressing by putting the burden of proof on the intellectual property rights holders.

The new regime may well impose a significant costs burden onto intellectual property rights holders. Issuing court proceedings for each infringement will certainly be an expensive business. Also, while some intellectual property infringements will be quite straightforward, others, such as those involving parallel / grey imports, may be legally much more uncertain. Therefore, intellectual property rights holders may even be forced to issue proceedings on weak / uncertain grounds, which is a recipe for even more expensive potential litigation.

In a time of recession and continuing problems with counterfeit goods, this news has probably gone down with intellectual property rights holders about as well as a cup of cold sick. Nice.

Mind you, HM Customs may end up saving some money, which might go some way to repaying the Government’s £Gazillions of debt. Some good news for Gordon, at last.

Recent posts

Subscribe

Categories