Wood Trade Marks and Design Limited

I learn via http://www.cyber-ipr.com/news4.html that India is soon to join the Madrid Protocol.

This is great news – it means that companies can cover India under trade mark applications without having to deal too much with local attorneys.  It also means that Indian companies with brands can get protection in the UK and Europe without using European attorneys unless there are problems.

For trade mark owners, there is a major additional benefit to International Registrations – lower maintenance costs.  One big expense with trade marks is their maintenance and the cost of keeping the records up to date.  International Registrations are cheaper and easier to look after, as you don’t need to use separate attorneys in each country.

If you are thinking about expanding your rights into more countries then send me an email message and we can talk about the best ways to do this without spending too much!

A few months ago I mentioned the Vodkat case.  Diageo (owner of KETEL vodka) had brought a case for passing off against the owners of VODKAT, alleging that there was goodwill in “vodka”, that it had specific traits and that the use of the term where the product did not share those qualities would be misleading.  They were successful.

The owners of VODKAT appealed, arguing that where you wish to allege passing-off rights in a generic term, it must be niche or luxury compared to the market (such as was the case in the CHAMPAGNE cases a good number of years ago).  The UK Court of Appeal disagreed with these arguments and rejected the appeal unanimously.  In doing so, however, one judge (Rix LJ) expressed regrets that this was the case in the face of a product which was clearly not vodka, which only idiots would think was vodka, when there were labelling laws to protect mislabelling.

I can see Rix LJ’s point.  I suspect that Diageo have “pulled a fast one” and that whilst the alcohol industry may approve of the outcome, the judgment actually sets a precedent which they will use to beat their competitors.  If they do, then well done to them for a clever move - cheers!

ICE CREAM – for those in the know, it’s a very cool brand (excuse the pun).  But their attempt to protect the brand in the UK failed due to an earlier registration of HIGH HEELS AND ICE CREAM.  The UK Intellectual Property Office took the view that the marks were similar, pointing to the fact that the ICE CREAM element of  HIGH HEELS AND ICE CREAM has an independent role in the mark (since you don’t tend to put the two together).  On that basis, the opposition brought by the owner of that brand succeeded.

I’ve some sympathy for Pharell and the other members of the Billionaire Boys Club (who use the ICE CREAM brand).  I suspect this will not be the end of the matter, however, as I can see easy ways to turn it round and where money is involved, there is often a way…

If you want to read the entire judgment, go here: http://www.ipo.gov.uk/types/tm/t-os/t-find/t-challenge-decision-results/o21010.pdf

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!)

Logos of single letters can be difficult to deal with… there are only 26 letters and only so much you can do with a letter in a logo.  If you have a logo containing a letter registered, how strong are your rights?

The answer to this question was the concern of case O/083/10 of the UKIPO.  Morrison Supermarkets Plc (a larger chain of supermarkets, for those outside the UK) applied to register the following logo:

As is the way with supermarkets, they applied to register for a wide variety of goods and services, including financial services.  The application was opposed insofar as it related to financial services by Esco Marginalen AB, the owners of this mark: 

Esco argued that the application was confusingly similar to their registration, which covered financial service and monetary affairs.  Whilst the hearing officer found that the respective services were identical and/or similar, and whilst he perceived a level of similarity in the marks, in his view no confusion would occur.  This was partially due to the fact that the services in question were financial services (where consumers would pay more care than other goods or services) and partially because the logo was not particularly distinctive of itself and so (without proof of additional distinctiveness through use) it was his view that consumers would not assume a connection as there were differences in the marks.

The moral of the story?  If you have a mark which is inherently weak, try to prove that your mark is stronger because of the use you made of it.  If you are the defending party, try to show that consumers are discerning.