Wood Trade Marks and Design Limited

For a few years we have had Community Registered Designs alongside trade marks.  They are quick to register and (unlike trade marks) you don’t have to declare the extent of your protection (or pay a sliding charge based upon the breadth of your wishes).

The downside is that the test is that an infringer must use a design which “does not give a different overall impression”.. and what does that mean?  There has been a feeling that the protection is narrow, certainly narrower than that under a trade mark.  There have not been too many cases before the courts, but help is at hand:

It is possible to challenge the registration of a Community Design on the basis that there is already a design in use which does not give a different overall impression – the same test the courts use, so by looking at those cases you can get some idea of how broadly the term is deemed to be.  Puma were successful in cancelling protection for this design

 on the basis of these designs:

I think it is the right outcome in my gut, and underlines that a design can actually protect you against the use of similar designs, not just identical ones.  I always advise my clients to think about registering designs – they may only last up to 25 years, but they are a great fall-back right.

For those that don’t know who the Sugababes are, they are a UK pop group.  They have had a lot of changes of personnel, so it’s a ripe one for a dispute over who owns the name.

Right now we have 4 different people arguing over the name:

Mutya Buena – one of the founder members

Mutya Buena, Keisha Buchanan and Siobhan Donaghy – the original line-up

“Sugababes” – presumably the current line-up

Island Records – the record company of the current line-up.

The state of play is that Mutya has made an application to register SUGABABES in her own name, as have the original trio and “Sugababes”.  “Sugababes” and Island Records have formally objected to Mutya’s application.  I see a few issues in the official papers:

1) You have to be a legal entity (a company, an association, etc) or a person to own rights and to enforce them.  “Sugababes” seems to be neither, so it seems like their applications and their opposition must be rejected on that ground – the original line-up got it right by putting all their names (the other common option being to register a company);

2) Island Records and “Sugababes” seem to disagree as to what the Sugababes have done, and what rights exist in the SUGABABES name.  I’d be interested to see what rights Island Records have anyway in their artist’s names…

This could get very interesting (for lawyers, at least!)

If a trade mark registration is not used for a certain period of time then it can be cancelled on the basis of non-use.  If there are legitimate reasons for non-use, however, then the registration may not be cancelled.

The mark ANDERSEN CONSULTING was registered as a European Community trade mark, but had not been used for some time.  The owner sought to defend the registration from revocation on the basis of non-use by arguing that because of a conviction in the USA for its audit activities relating to ENRON (a conviction that was later overturned) which prevented them from trading in the US for 3 years to 2005 there were proper reasons for non-use.

Rejecting this argument, the Cancellation Division held that the reasons for non-use must apply to the whole or a substantial part of the period during which use needs to be shown.  In addition, the reasons must apply to the relevant goods and services – in this case the coverage of the registration was broader than simply “auditing services”, and so the ban in the US could not validly be applied to those other goods and services.

Interesting case… I noticed that the party that applied to cancel the registration is the owner of the trade mark ARTHUR ANDERSEN (Arthur Andersen rebranded as ACCENTURE – should we expect Arthur Andersen to return?)… http://tinyurl.com/yhako2z