Wood

DOVE is a well known toiletries brand.  To some, ROJA DOVE is a well known perfumier.  What happens when the world of toiletries clashes with the world of perfume?

RDPR had applied to register ROJA DOVE in relation to “Perfumes and perfumery products, aromatic substances for use in the manufacture ofperfumes; perfumed products; perfumed bath foam preparations; perfumed bath salts; perfumed milks; perfumed lotions; perfumed sprays; perfumed creams; perfumed soaps” and “research services into the development of perfumes.”

DOVE is registered by Unilever for a range of goods, including soaps and perfumery.  They formally opposed the registration of ROJA DOVE.  RDPR accepted that Unilever had a reputation for some goods, but notably not perfumery.  Before the UKIPO at first instance Unilever was successful and the application was refused.  RDPR appealed and this was successful – the writing was seemingly on the wall when DOVE was described as a “soap manufacturer”.

Two main points come out of the case: Firstly, just because you have a reputation for some goods for which you have a registration, it does not stand that you can rely upon reputation for other goods; secondly, be careful to ensure a decision is obtained on all grounds – Unilever had only obtained a decision on one ground.  On reversing the decision, the Appointed Person ordered the registration of ROJA DOVE  for some goods and services, seemingly depriving Unilever of the opportunity to get a full decision on the other grounds.

Humour often revolves around stereotypes – more often than not, the difficulties between two people, or an unexpected outcome. Where do you draw the line, however, between humour on the basis of race or nationality on the one hand and derogatory treatment and the perpetuation of damaging stereotypes on the other? Is there one?

Reed Online created an advert which used a character speaking to his boss, who responded angrily and in German. A voice-over said “Boss a bit of a tyrant?..” 13 members of the public complained that the advert was offensive to Germans, and the Advertising Standards Authority agreed, ruling that the advert should not be broadcast again. They felt that it “reinforced a negative and outdated cultural stereotype of German people as overpowering and tyrannical”. On that basis they thought it had the potential to cause serious offence to some.  The unfortunate background was that the Radio Advertising Clearance Centre had approved the advert, saying that the advert was likely to be seen as humorous by most. Reed would have thought the advert would be fine on that basis.

The rule of thumb for advertisers would appear to be that the number of people offended must be balanced against the level of offence which could be caused. In the case of religious or political subjects, and the depiction of people with disabilities, particular care is required. It appears to me that there is some discrepancy between the treatment of advertisers and some TV shows – one wonders why programmes such as Fonejacker are able to perpetuate stereotypes about a wide variety of races in the name of comedy.

When is a vodka drink not vodka?  When it’s a blend.  There is a large market in blended products, be they ready-to-drink products (alcopops) or the various other types of alcoholic mixes (licqueurs and “light spirits” being some of those products).

If you are marketing a vodka mix, is it wrong to use the mark VODKAT?  How about if you also use imagery connected with VODKA?  what about if you add the word IMPERIAL (which is common on vodka)?

Diageo have obtained a ruling this morning that the VODKAT product  was “passed-off” as vodka.  Vodka is one of the spirits mentioned in European Regulations relating to the definition and labelling of spirits, so there was clearly a known meaning of the term “vodka”. 

It was probably the right decision, but it was a lot of work to get things sorted.  Diageo (who own the SMIRNOFF, KETEL ONE and CIROC vodka brands) established that VODKAT was costing them approximately 3% of sales of SMIRNOFF.  Given that a legal case of this size would have probably cost at least £900k to bring (and I would expect costs of well over a million given the amount of evidence and expert opinion), it was probably worth bringing since from a mathematical point of view you would need about £30M in sales to make the case “break even”.  Diageo must have been achieving £30M across their vodka brands from UK sales.

Interestingly, VODKAT changed their packaging in August 2009 – presumably with an eye to the outcome of the case and having seen the evidence.  So given that the court said that VODKA has a meaning (a protectable meaning) whereas some other terms (such as schnapps) do not, what is VODKAT described as now?  You guessed it… schnapps.  For VODKAT however, their new get-up was deemed not to have overcome the spectre of passing-off, so we should see VODKAT off the shelves, at least for a while.  Time for a rebrand?

The choice of the right reasons to object to someone’s use or registration of a trade mark is essential – it goes without saying that it can make the difference between a win and a loss.

So if you were faced with the marks TOMMY and TOMMY HILFIGER for clothes versus a later application for the mark TOMMY DILLINGER for clothes?  You might expect Tommy Hilfiger to win. Do you think the marks are  confusingly similar?  The UK Trade Mark Office didn’t think so.

The marks TOMMY and TOMMY HILFIGER are reasonably well known in the UK (as well as elsewhere).  As soon as I saw the mark TOMMY DILLINGER was the subject of the case, I knew who would have opposed.  Now, I know that is not the test (some would say I have a little more interest – and hopefully knowledge! - than the man in the street), but you would think that gives a clue as to what the answer should have been.

Unfortunately, it seems that Tommy Hilfiger Licensing missed a trick by not including a claim that their mark has a reputation, and that the TOMMY DILLINGER mark would take advantage of that reputation to sell more clothing.  That would have seemed the overarching “story” that the attorneys could have sold.

I’ll be interested to see whether this one goes any further – it may well be that Tommy Hilfiger missed the boat (no doubt a catamaran filled with beautiful young things) and will have to put up with TOMMY DILLINGER.

It was interesting that Tommy Hilfiger also seemed to put in irrelevant information (most of the legible and dated info was from the wrong time period) and their turnover figures may not have been just for clothing.  Fortunately for them, this wasn’t challenged strongly by the other side.  If you want to read the whole case it is here http://bit.ly/7yMlZB

It is said that about 70% of all people who die fail to have a will.  Sometimes a lengthy legal process follows, in which the various interested parties fight for their fair share.  What happens with intellectual property?  Intellectual Property is a type of personal property, which means that it can follow with the rest of the estate.  It is important that any trade marks be dealt with as with any other property.

A further issue arises with regard to unregistered trade marks, a sorry situation which occurred recently with regard to the mark IAN ADAM (http://bit.ly/5zs9jM).  Ian Adam was a very successful and well-respected voice coach.  When he died, a number of parties were still interested in using his techniques and continuing his work.  One of these was a teacher who had filled in for Mr Adam when he was on holiday or otherwise unavailable.  This person applied to register the words IAN ADAM as a trade mark.

The next of kin of Mr Adam attempted to stop the mark from becoming registered, arguing that people would be misled (thinking that Mr Adam would be involved).  They also said that the application was made in bad faith, knowing of the rights of Mr Marks.  This challenge was rejected.

It seems sad that the work of a third party should be unfairly monopolised by way of the registration of trade marks when perhaps the right thing would be that it be left to flower for the benefit of the public.  It will be interesting to see whether the owner of the mark tries to stop others from legitimately saying that they practise Mr Adam’s methods – if not, then why register the mark?  Perhaps it was a reactive effort on the basis that the teacher thought she might be prevented from doing just that herself.