Google may be liable for use of third party trade marks
Internet , Trade Mark / September 2005

TRADE MARK Internet The US District Court for the Eastern District of Virginia has found that search engine company Google is partially liable for including third party trade-marks in the text of sponsored links as this could cause consumer confusion in violation of US trade mark law. Google sells ‘Sponsored Links’ that appear alongside “organic” search results returned when a user queries Google’s database of indexed web sites for general terms. Justice Leonie Brinkema found that that Google’s practice of allowing trade-marks in the text of third party advertisements that appeared as Sponsored Links caused consumer confusion. Google has since ceased this practice. The Court was careful to limit the potential impact of this decision on Internet business practices, noting that the plaintiff’s business model is a unique one and that the findings are fact-specific and not yet fully resolved. Further, the Court noted that none of the advertisers themselves are party to the action and their potential liability is not an issue before the Court. For a news article, visit: From a summary of the case by Jason Young of Deeth Williams Wall published in E-TIPS® newsletter, Vol 4 No, see: See:

EU proposes harmonisation of criminal sanctions for infringements

COPYRIGHT, TRADE MARKS, PATENTS, DESIGN RIGHTS Record Labels, Music Publishers, Film and Television, Internet The European Commission has adopted proposals to form a new directive which will align criminal law in the European Community in relation to the use of criminal sanctions for copyright infringement. The proposals will extend to at least commercial piracy. The directive is aimed at allowing Community wide co-operation in the investigation and prosecution of piracy and counterfeiting. The Commission argues that counterfeiting and piracy are so lucrative, and carry such light penalties relative to other forms of trafficking, that they are attracting investment from criminal organisations. The Commission says the directive is being aimed particularly at organised counterfeiters and faked goods that are dangerous to public health and safety, with minimum prison terms of four years being mandated for these offenses. Individual countries will have the option to impose harsher terms when the directive is translated into national law. See:

Westlife lose battle over name in European Court of Justice
Artists , Trade Mark / June 2005

TRADEMARK Artists, Merchandising Judges in Luxembourg ruled that “Westlife” cannot be registered as an EU trademark – because it is too similar to the word “West”. A German tobacco firm has already trademarked that name and judges said the fact that Germans say “vest” and not “west” did not lessen the confusion with the merchandise of the pop group. Westlife can still go on using their name as well as on merchandise, but it means they cannot protect it as an exclusive trademark. The band applied for an EU trademark in 1999, but the Germany company claimed there was potential confusion because the two sell similar types of merchandise (not least because of West’s involvement in motor racing as a team sponsor selling branded clothing etc). During a five-year legal tussle, lawyers for Westlife argued that there was a clear distinction between the group’s name and the single word West. See:

Linkin Park Trade Mark application for posters refused
Artists , Trade Mark / May 2005

TRADE MARK Artists by Tom Frederikse, Solicitor The band Linkin Park has lost an attempt to register its own name as a trade mark in respect of the sale of posters. An appeal to the Appointed Person was dismissed, the original objections of the Patent Office Examiner (that the mark lacked “distinctive character” and was “descriptive”) being upheld. The American pop group applied for the mark “Linkin Park” for use in marketing of posters of their band and argued that the mark must be distinctive because they had invented the words. However, the Appointed Person cited a 1970 case concerning the word “Tarzan” in which it was held that, by the date of the trade mark application, the word had become well known and had therefore ceased to be an invented word. The band also argued that, because the words were by themselves meaningless, the mark could not be descriptive. The Appointed Person disagreed, stating that the words were no longer meaningless as they had acquired the well-established meaning of denoting the band in the eyes of the average consumer. As the Appointed Person put it, a person asking “Do you have any Linkin Park posters?” is clearly describing a characteristic…

Rosa Parks, OutKast and Sony-BMG settle

TRADE MARK/IMAGE RIGHTS Artists Sony BMG and Rosa Parks, who became a symbol for the U.S. civil rights movement when she refused to yield her seat on a segregated bus in 1955, settled her lawsuit over the use of her name in an OutKast song title. The settlement included an agreement that a tribute CD featuring OutKast would be produced later this year by Sony BMG to honour the 50th anniversary of Parks’ arrest. The parties will also produce a television broadcast tribute to Parks, he said. Parks, 92, had claimed that the song “Rosa Parks” on a 1998 OutKast album amounted to false advertising under U.S. trademark law and intruded on her rights. OutKast and their label countered that the title was constitutionally protected free speech because it was related to the song’s lyric of “everybody move to the back of the bus.” The Supreme Court in December 2003 rejected this argument and upheld a federal appeals court decision that permitted Parks to pursue her lawsuit. See:

Unauthorised use of model’s photograph results in massive damages against Nestlé
Artists , Image Rights , Trade Mark / March 2005

TRADEMARK/IMAGE RIGHTS Artists In 1986 Russell Christoff (58), now a nursery school teacher but then a male model, sat for a two hour session for Nestlé for which he was paid $250 (about £130). Over fifteen years later in 2002 he discovered that, unbeknown to him, his face had been adorning Nestlé’s ‘Tasters Choice’ for over a decade. Having checked his original contract Mr Christoff found that as a minimum payment he was due $2,000 if his image was used. But this right, coupled with a Californian state law which is designed to protect celebrities image rights, led to a claim for over $8.6 million which eventually resulted in a Jury in the Los Angeles County Superior Court awarding damages of $15.6 million. This was based on a fee payment of $330,000 for use of his image plus 5% of the profits from the Tasters Choice brand. His face had been used on labels in the US, Israel, Japan, Kuwait and South Korea and had even been used as a screen saver. Nestlé will appeal the award. Source: The Times, 2 February 2005

Two new decisions on trademarks in colours and shapes: Heidelberger Bauchemie Gmbh (ECJ C-49/02 )
Trade Mark / March 2005

TRADEMARK Merchandising For many years, traders have used colours or combinations of colours to distinguish their goods and services from those of other traders but European Union trade mark registries and courts have struggled to define the circumstances in which colours will be allowed registration as trade marks. The ECJ’s 2003 decision in Libertel answered many of the issues in relation to single colour marks per se, confirming that such marks are registerable in limited circumstances. However the ECJ’s recent decision in Heidelberger Bauchemie GmbH has significantly raised the hurdle for registration of colours per se meaning that many existing registrations may not be valid. In this case German company Heidelberger applied to the German Patent Office for trade mark registration of the colours blue and yellow: the applicant’s corporate colours were used “in every conceivable form, in particular on packaging and labels”. The German Patent Office rejected the application on the grounds of lack of distinctive character. Heidelberger appealed to the Bundespatentgericht, which referred two questions to the ECJ, asking, in short, whether combinations of colours per se are registerable as trade marks, and, if so, in what circumstances. The ECJ started with a three-step test for registerability for combinations of colours: 1….

House Judiciary committee reviews use of band names
Artists , Trade Mark / February 2005

TRADEMARK Artists The United States House Judiciary Committee has reviewed legislation that would prohibit groups from using the name of a well-known band, unless the group has one of the band’s original members. Representative Dwight Wrangham (R-Bismarck) is sponsoring the bill. It says performers may do “tribute” concerts, but only if advertising makes it clear that the group doesn’t have any original members. Evidence before the Committee included the example of ‘the Platters’ where a number of groups bill themselves as The Platters, a doo-wop act that had a number of hits in the 1950s and 1960s. Several of the groups have little or no connection to The Platters, which were inducted into the Rock and Roll Hall of Fame in 1990. The Committee further heard that many group names are owned by someone who was never in the group. That person may sell the rights to the name to other performers. The Committee heard that “There has been a lot of misinformation, and this is an attempt to correct that,” he said. Representative Andrew Maragos (R-Minot) said the bill wouldn’t affect such groups. “If they have the legal right to use the name ‘The Platters,’ then they are not…

Civil rights era icon Rosa Parks and Jerry Garcia’s estate fight to protect their names
Artists , Trade Mark / February 2005

TRADE MARK Artists Rosa Parks, who famously refused to give up her seat on a bus for a white man in Montgomery, Alabama in 1955 is close to reaching a settlement with hip-hop duo Outkast over the use of her name. Mrs Parks was arrested for the act and her action prompted a 381 day boycott of the city’s buses by the black population. The dispute relates to a 1998 song Rosa Parks released by Outkast which makes little reference to the Mrs Parks save for the lyric ‘Aha, hush the fuss, everybody move to the back of the bus’. However the title, lyric and reference to sex in the song prompted lawyers for Mrs Parks to bring an action in 1999 against Outkast for failing to secure permission to use Mrs Park’s name and false advertising. Outkast claimed the right to freedom of speech under the First Amendment to the US Constitution and the case was dismissed in the District Court. The case was reinstated in the superior court along with a second claim against stores which sold the album was due to go ahead in the summer but both parties agreed to settlement talks with a mediator. In…

Pepsi claim that new film’s title infringes their advertising slogan

COPYRIGHT/TRADE MARK Record Labels, Artists, Music Publishers Pepsi has brought an action in the Delhi High Court against the makers of the film ‘Dil Maange More’ alleging that the film title is an infringement of copyright, as it closely resembles Pepsi’s previous ad tagline, ‘Yeh Dil Maange More’. The film include a sequence by actor Actor Shahid Kapoor crooning ‘ Dil Maange More’ . The Delhi High Court has issued notices to the producer, director, music distributor and owner of the website promoting the film, `Dil Maange More’. Pepsi has alleged that the film title is an infringement of the copyright, as Pepsi had earlier used the phrase, ‘Yeh Dil Maange More’ as the tagline for all its advertising. The film’s producer Nikhil Panchamiva has said that Pepsi are too late in serving the notice as the film has been released and the promos for the film have been on air since November 1. In its application, Pepsi also appealed for an order restraining the defendants from using the film title for overseas audio and video distribution. However, the film has been released overseas through Mumbai-based distributor Neptune and producers claim that the notice will have no impact on the…

Navataire v Easyjet (2004)

COPYRIGHT Computer Software, Music Publishing, Trade Mark by Tom Frederikse A software designer has failed in his attempt to protect certain aspects of his computer program when the High Court ruled that there is no copyright in the user interface (the visual front-end) of an application. In a complex 111-page judgment of 30 July 2004 (only published in December so that the confidential information could be censored), Navataire, the software designer, lost on most claims but won some others. Navataire had supplied a software system for tickletless airline booking to easyJet, but easyJet subsequently hired their own software developer, Bulletproof Technologies Inc, to deliberately design a new system with the same “look” as, and to achieve the same results as, Navataire’s program. While admitting that none of the underlying software in the new system copied the old one and that Bulletproof had no access to the source code and did not “decompile” the old system, Navataire nevertheless claimed that their copyright was infringed by something called “non-textual copying” of the work as a whole, or of the various “modules” of the system. Put more simply, it was alleged that easyJet had copied the plot of the story without taking the…

New .EU domain names to be available in 2005
Trade Mark / December 2004

TRADEMARK All Areas The new .eu top level domain names are to be phased into use in 2005 following an agreement reached between the European Commission and EURid, the registry responsible for the new .eu domain name. The first period of registration, the ‘sunrise period’, will allow those with registered trademarks , names of public bodies and territories governed by such bodies the right to apply for the .eu suffix. The application for the domain name must exactly match the name registered or for that which priority registration is claimed and evidence supporting the registration must be provided within 14 days of application. This phase will last for two months probably starting in April or May 2005. After the sunrise period the .eu domain will ‘go live’ and be freely available on a first come first serve basis. Certain names will not be registerable by EURid (eg geographical names and those which are clearly defamatory). Evidence may be adduced to support a registration (such as the name of a company registered with Companies House) but where an application is based on an unregistered right or mark then the onus will be on the applicant to produce evidence supporting the application…

English Court of Appeal Rules that Dishonesty not Required to Establish Bad Faith in Trade Mark Applications
Artists , Record Labels , Trade Mark / October 2004

TRADE MARK Record Labels, Merchandise, Artist Harrison v Teton Valley Trading Co [2004] EWCA Civ 1028 The Court of Appeal has upheld the decision of the Registrar of Trade Marks to reject an application for the trade markChina White as the application had been made in bad faith. The Applicant had applied to register the trade mark for a cocktail drink. The Opponents, the owners of the well known London night club named China White, argued that the registrations should be refused under section 3(6) of the Trade Marks Act 1994 which states that “a trade mark shall not be registered if or to the extent that the application is made in bad faith”. The drink was developed by a former employee of the night club who had been asked to develop the cocktail by the Opponent and had signed a confidentiality agreement to protect the recipe. Despite the agreement, the former employee later approached the Applicant and told him that he had developed a cocktail called China White and a derivative of it was to be served at the night club. The employee, Mr Rymer, told the Applicant that he was not bound by a formal contract with the night club and…

Artist Wins Right To Use Barbie Dolls
Artists , Copyright , Trade Mark / August 2004

COPYRIGHT & TRADEMARK Merchandising, Artists Artist Tom Forsythe from Utah has fought off an action by Mattel who attempted to prevent the artist from using Barbie Dolls in his work. Mr Forsythe photographed undressed dolls positioned with kitchen equipment to comment on the subservience of women. He argued that the dolls produced a gender oppressive value in girls. In 1999 Mattel launched an action against Forsythe claiming copyright and trade mark infringement arguing that the artist was using their brand to sell and/or promote products without Mattel’s permission. They demanded destruction of any photographs and negatives. Judge Ronald Lew in the Los Angeles Federal District Court threw out the claim as groundless awarding costs of $1.8 million against Mattel and warned Mattel against intimidatory tactics. See : The Times 29 June 2004

4,700 Pirated Compact Discs, Cassette Tapes, and DVDs Crushed in Jamaica
Copyright , Record Labels , Trade Mark / August 2004

TRADEMARK & COPYRIGHT Record Labels Jamaica has begun to clamp down on hard copy piracy in the country and the Jamaican Minister of Commerce, Science and Technology Phillip Paulwell and a small gathering of music industry personnel witnessed the symbolic destruction of the pirated. The Minister added “Beware, the law is going to get you, leave people’s intellectual property rights alone, go and do your own. I’m glad to be a part of this exercise as we publicly demonstrate that the country is serious about pirating of people’s creative work. The government is grateful,” he added, “to the Jamaica Intellectual Property Office – under my ministry – and also to the police for the role that they are now playing to prevent person’s works from being pirated.” The CDs, DVDs and cassettes, valued at $1.5 million, were seized by the Intellectual Property Division of the Organised Crime Investigation Division of the constabulary, which has been working with the Jamaica Intellectual Property Office (JIPO) to clamp down on breaches of the Copyright and Trademarks Act. More than 15 persons were prosecuted in connection with the seizures. JIPO said 22 people have been prosecuted for breaching the Copyright and Trademarks Act since…

Scottish Ticket Counterfeiter Spared Jail
Live Events , Trade Mark / August 2004

TRADEMARK Live Event Industry A Scottish judge has told a man that he undersold fake tickets for Celtic’s Uefa Cup game in Seville last year. Sentencing Alan Cloughley to community service, Sheriff Deirdre MacNeill QC said the forged tickets were of a convincingly high standard but she remarked that Cloughley, who sold each ticket for £5, could have got more than ten times that amount. The 23-year-old economics graduate was caught by police at his Glasgow home just days before the game. Glasgow Sheriff Court heard that Cloughley produced and sold hundreds of fake tickets for Celtic’s Uefa Cup Final clash with FC Porto. He appeared for sentence on Friday having earlier admitted two breaches of the Trade Marks Act. Sheriff MacNeill said it had been a “sophisticated and well planned operation” but the court heard that people who bought tickets from Cloughley were aware that they were fakes. Sheriff MacNeill said the seriousness of the offence warranted a prison sentence, but she was prepared to order him to do 260 hours of community service. Acting on a tip-off, police raided Cloughley’s home and seized 291 tickets and £300 in cash. He claimed he bought a legitimate ticket and copied…

Eminen Wins Back Domain Name
Artists , Trade Mark / June 2004

TRADE MARK Artists Eminem has won a cybersquatting case against a British company who used his name without, which sells ringtones and picture messages, has been ordered to hand the domain name back to the star within ten days. The site featured a disclaimer stating it is unofficial and not connected to Eminem but the ruling made by the United Nation’s World Intellectual Property Organisation (WIPO) found that Tim McIntosh and Visitair, which runs the site, had no legitimate rights to the domain name. It must transfer back to the rapper within the ten day period unless the company decides to appeal against the ruling. Eminem is the first rap star to use WIPO in settling a dispute over a domain name. Other singers, including Robbie Williams, Madonna and Celine Dion have used the organisation in the past to settle similar disputes. It is the second legal battle Eminem has been involved in this year, as he pursues a claim against Apple Computer for alleging the company used his hit single Lose Yourself in a TV advert without permission. See : ‘Abusive Registration’ under the Nominet UK Dispute Resolution Policy In March 2004 Google Inc won an action brought…

European Community Trade Mark Registration
Artists , Trade Mark / June 2004

TRADE MARK Artists, Merchandising Compass Publishing BV v Compass Logistics Ltd (2004) This case involved two companies with the same name, the claimant being the pan-European business consultancy Compass Publishing BV (“CP”) and the defendant the UK based Compass Logistics Ltd (“CL”) who offered management consultancy services. CL had been trading since 1995 using the name “Compass” and “Compass Logistics”. The claimants had secured a Community Trade Mark in 1996 for the word ‘Compass’ in a class including business and management consultancy. The Claimant filed three claims for infringement of its trademark. The defendant argued that the Community Trade Mark should be held invalid as by the date of the registration they, CL, had acquired a valuable and protectable goodwill in respect of the mark “Compass Logistics” and that they could have brought an action against CP using the law of passing off. The defendant argued that the mark should be declared invalid to the extent that it covered any field of business consultancy, particularly relating to logistics, where the use of “Compass” would cause confusion with “Compass Logistics”. The defendants argued that they had already built up goodwill in their name before the claimant’s registration of the mark Article 8(4) of EC…

New Trade Mark Act in Czech Republic
Czech Republic

TRADE MARK Record Labels, Music Publishers, Artists, Merchandising, Live Event Industry, Television, Internet As of April 1st 2004 a new Trademark Act (No.441/2003) will come into force in the Czech Republic. Although the structure of the Act has been considerably amended, there are only limited substantive changes in the law. However there are completely new are provisions concerning Community Trademarks, which will be automatically extended to the Czech Republic with the date of its accession to the European Union (these provisions will come into force as of May 1st 2004). The most important amendments are detailed in an article by Almut Rohnstock and a link is provided below. The definition of trademarks (Art.1) has been slightly amended, now including the possibility of colour trademarks; Art.2 now regulates which trademarks are able to claim protection in the Czech Republic, including CTMs and well-known trademarks according to Art.6 of the Paris Convention. Community Trademarks with seniority may also claim older rights (Art.3). Grounds for refusal ex officio (Art.4) as well as grounds for opposition (Art.7) and nullity (Art.32) newly include applications filed in bad faith. The provisions concerning oppositions and nullity (Art.7 and 32) based on known trademarks have been reformulated and expanded; the…

Lacoste Loses Trademark Action Against Crocodile International
Trade Mark / May 2004

TRADE MARK Merchandise Lacoste has lost its trademark suit against rival Crocodile International over the use of the crocodile logo in China. The emblem became symbolic of the Lacoste brand but Singapore based Crocodile International claimed it was first to dream up the design, registering the emblem in 1951. Lacoste, a French based company was ordered to stop using the logo and to pay one dollar in compensation. The Shanghai court started the hearings last December. The dispute had been ongoing for over four decades. The logos only differ materially in the direction they face – one to the left and one to the right. The crocodile design is slightly different. Lacoste says tennis legend Rene Lacoste registered the logo in France in 1933; then in China in 1980. But Singapore businessman Tan Hiantsin says his logo was designed in 1947 with the English word “crocodile” and registered in Singapore in 1951. He disputed Lacoste’s claim to have registered Chinese rights before the late 1990s. The case centred on Lacoste’s moves to register the trademark under its brands of cosmetics products in 1995. A key point in the argument was Mr Tan’s nationality. He’s a Chinese-born Malaysian and he claimed…

Oxford University Denied Exclusive Use of ‘Oxford Blue’
Trade Mark / May 2004

TRADE MARK Merchandise Oxford University has been denied exclusive use of the ‘Oxford Blue‘ mark after the Registrar of Trademarks ruled that HS Tank & Sons from Birmingham were entitled to produce a line of clothing with the same name. The company had been producing jackets and other garments using the mark since 1985. Oxford University have never trade marked the name. The Registrar held that whilst the University owned the reputation in the name Oxford Blue they enjoyed no goodwill which could stop HS Tank from exploiting the name. The Times, 7 April 2004 at page 5

007 Brand protected in Canada
Trade Mark / April 2004

TRADE MARK Television, Broadcasting, Merchandising Danjaq Inc. v Spiridon Zervas & Dimitr Zervas in Partnership trading as 007(2004) The applicants Zervass had sought to register the marks 007 and 007 PIZZA & SUBS and Design for its restaurant business in Canada. The application was opposed by Danjaq as owner of the trade-marks JAMES BOND 007 and GUN Design based on the novels by Ian Fleming. Danjaq argued that the applicant was not entitled to registration on two grounds: firstly, because the trade-mark 007 had been previously used and made known in Canada and, secondly, that the applicant’s marks were not distinctive. The Registrar of Trade Marks rejected the opposition on the basis of the wide disparity in the wares, services and businesses of the two parties. The opponent appealed to the Federal Court of Canada. On appeal, the Court considered new evidence filed by the opponent regarding the widespread distribution of films featuring the JAMES BOND character which are and were available through television broadcasts and video rentals and the publicity generated by the print media. In reviewing the evidence, the Court had little difficulty in concluding that the opponent’s marks were used and made known in Canada prior to…

Owners of ‘Lord of the Rings’ copyrights and trademarks take action
Copyright , Trade Mark / April 2004

COPYRIGHT AND TRADEMARK Film, Television The Saul Zaentz Company dba Tolkien Enterprises, Inc. and New Line Cinema Corporation, Plaintiffs v Kultur International Films, Defendants The companies that own the rights to the J.R.R. Tolkien “Lord of the Rings” books and related movies and merchandise have sued a New Jersey company for publishing a four-volume DVD set about the books. The suit filed by the Saul Zaentz Company, which has owned the trademarks and intellectual property rights since 1976, and New Line Cinema, allege that Kultur International Films has infringed on the Tolkien trademarks and copyrights by importing, making and selling the set “Inside Tolkien’s The Lord of the Rings”. Each of the defendant’s four DVDs focuses on an individual volume of the Tolkien books, the suit said. The defendants have created a ‘mapped’ Middle Earth where the Lord of The Rings fantasy is set and have included new original artwork and illustrations. Bonus features include an interview with the DVD illustrators and new music inspired by The Lord of the Rings performed by folk group Mostly Autumn. The plaintiffs seek to stop the defendants’ alleged infringement and dilution of the Tolkien rights. They also seek damages, costs, legal fees and…

Yoga Guru Claims Rights in Yoga Position and Teaching Style
Artists , Copyright , Trade Mark / March 2004

COPYRIGHT AND TRADEMARK Artists Bikram Choudhury, a former weightlifter who devised his own method of teaching and practising yoga is being sued in the San Franscisco Federal Court by a number of his yoga schools over his assertion that he owns copyright and trademark rights in his teachings and a number of postures. They caim there can be no rights to traditional postures and teachings. Mr Choudhury has written to a number of his franchised yoga schools alleging them of violating his intellectual property right by deviating from his strict teachings and employing instructors who were not trained by him. Source: The Guardian, 9 February 2004

New York Mets Gain UK Mark Registration
Artists , Record Labels , Trade Mark / March 2004

TRADEMARK Record Labels, Artists The New York Mets baseball team have been allowed to register their “Mets” mark in the United Kingdom in classes which include use for clothing, hats, toys, stationery and magazines. The decision by the UK Registrar for Trademarks was a blow to the Ministry of Defence who opposed the application saying that there was a likelihood of confusion with its own mark for the “Met Office” which is a registered mark for the Meteorological Office. The Trade Mark Act 1994defines a trade mark as any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of another undertaking. The Registrar held that there would be no confusion in the British public between the baseball team’s mark and the national weather forecasting service’s mark. This is the second case the Ministry of Defence have lost in as many months. The MOD applied to register the Royal Air Force’s red, white and blue ‘target’ or roundel as a trade mark. A number of fashion companies successfully opposed the registration saying that the roundel entered the public domain in the 1960s when the ‘mods’ started using the same red, white and blue roundel as…

Microsoft Regrets Action Against
Internet , Trade Mark / March 2004

TRADEMARK Internet Microsoft has admitted it may have made a mistake in threatening Mike Rowe for using his web site, Rowe, a student from Vancouver, registered to front his part-time Web site design business in August 2003. Three months later he was emailed by Microsoft’s lawyers asking him to transfer the domain name to Microsoft. They offered to pay him a “settlement” of $10 (5), which is the cost of his original registration fee. However, after the case received widespread publicity on the Internet, Microsoft has admitted it may have taken things too far and has promised to treat Rowe fairly and admitted that his website name was a “creative domain name”. However, and on a serious note, Microsoft lawyers were undoubtedly right in taking the matter seriously against a name which could have possible confusion with its own trade marks. See :,39020651,39119214,00.htm

United Kingdom: Trade Mark Registration – v – Trade Mark Use: A Costs/Risk Analysis

TRADEMARK Artists, Record Labels, Internet ARTICLE: By Emma Lambert, Solicitor The best method of protecting your brand against copying and of increasing its value is to register it as a trade mark. Unfortunately registration can be expensive. If you choose not to register your brand it may be protected under UK law by the law of “passing off”. Recent Court cases are a reminder that passing off still has teeth but you cannot afford to be complacent even if you do register your brand as a trade mark. One case in particular, Associated Newspapers Ltd and another v Express Newspapers, carries messages for brand owners. The Problem The Claimant, Associated Newspapers, owns the ‘Daily Mail’, ‘The Mail on Sunday’ and ‘Evening Standard’. The Defendant owns the ‘Daily Express’ and intended to launch a free evening newspaper in London, in competition with the Evening Standard. Various names were considered for the Defendant’s newspaper but each could be shortened to ‘The Mail’. The Claimant argued that use of the proposed names: ‘The Mail’, ‘Evening Mail’ and/or ‘London Evening Mail’ would constitute “passing off” and trade mark infringement of the Claimant’s registered trade marks: The Mail; Daily Mail; andMail on Sunday. The Defendant argued that the Claimant…

Robbie Williams Trademarks His Name
Artists , Trade Mark / February 2004

TRADE MARK Artists Robbie Williams has registered the right to use his name on anything from videos and CDs to crayons and paper napkins. Robbie joins stars such as Madonna and events such as the Glastonbury Festival who have filed their names to give them protection and added ammunition to avoid costly legal battles. Trademarks are designed to allow people to distinguish between the goods and services of traders. But many well-known figures have used the system over the years provided their name is considered “distinctive” enough. The Robbie Williams mark is covered for a wide range of music and video recordings as well as clothing merchandise. The star is also protected for “printed matter”, which includes address books, calendars, posters, playing cards and diaries. COMMENT : EC Directive 89/104 provides that a trade mark may consist of any sign capable of being graphically represented particularly words including personal names designs, letters, numerals, shapes of goods or their packaging provided that such signs are capable of distinguishing the goods and services of one undertaking from those of other undertakings. This means trade marks can include letter/numeral combinations, logo marks and business marks, designs, certain shapes, colours, liveries or shop facades. Artists…

ECJ: A Sound Can Be a Trademark

TRADEMARK Record Labels, Music Publishers, Internet, Film, Television, Merchandising Shield Mark BV -v- Kist (t/a Memex) C-283/01 This case arose from a referral from the Dutch courts (Hoge Raad der Nederlanden). The Claimant, Shield Mark BV, had registered a melody consisting of nine notes from Beethoven’s Fur Elise and the sound of a cock crowing (as‘kukelekuuuuu’) as sound marks in the Netherlands. Shield used the nine note sequence in advertising and used the cockerel crow as an opening sequence when software it distributed was opened. Shield became aware that the defendant was using the same nine note sequence in an advertising campaign and also used a cockerel’s crow when software he distributed was opened. The question was raised whether sounds or noises could be trademarks within the meaning of Article 2 of EC Directive 89/104/EEC. Article 2 provides that a trademark can consist of any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings. The European Court held that the list of examples in Article 2 was non-exhaustive, so sounds were not excluded as…

England Rugby Star Considers Protecting His ‘Kicking’ Ritual
Artists , Image Rights , Trade Mark / January 2004

TRADE MARK, IMAGE RIGHTS Artists Jonny Wilkinson, hero of England’s triumph in the 2004 Rugby World Cup, is considering using trade mark law or patent law to protect his distinctive ‘cradle’ ritual which he uses to focus his mind before taking penalty or conversion kicks in the game. The Scottish football team, Celtic FC, has succeeded in registering still images (a graphic representation) of their distinctive pre-match on field ‘huddles’ as a trademark, and a number of sports stars have had their photographic images registered as trademarks. But registration of the actual movement sequence itself would be a new departure in UK trademark law. Movement marks themselves are not unknown and a number of companies have registered moving images but these have been in a graphic form (for example, a rotating company logo). At the most basic level, for trade mark registration to succeed the ‘movement mark’ would have to be capable of being represented graphically and of distinguishing the goods of one person from that of another. However, it is possible that a complicated and original sequence of moves could have protection in copyright law just as a choreographed sequence of steps would be – as a dramatic copyright. Alternatively, it…

Beneficial Ownership of Intellectual Property Rights
Artists , Record Labels , Trade Mark / January 2004

TRADE MARK Record Labels, Artists, Merchandisers R Griggs Group Ltd & Others -v- Ross Evans (1) Raben Footwear Pty (2) & Others (2003)  The claimants manufacture and sell the well known Dr Marten boots and footwear. Dr Marten is a registered trade mark and used by the claimant under licence. The boots also carry the Air Ware logo, a trade mark owned by the claimant. In 1988 a combined logo incorporating both logos was produced and thereafter used on footware produced by the claimant. The first defendant was a freelance graphic designer retained by the second defendant. He designed the combined logo. The second defendant (and the other two defendants) took an assignment of copyright in the combined logo from the first defendant. The claimant sought a declaration that it was the beneficial owner of the copyright in the combined logo. Peter Preston QC held that (1) when a freelance designer was commissioned to create a logo for a client it would normally be necessary, in order to give business efficacy to the contract, to imply a term assigning the copyright beneficially to the client in order that the client could prevent others using the logo (Robin Ray -v- Classic FM plc [1998]) and (2) The…

“Doublemint” Cannot Be Registered As a Trademark
Artists , Trade Mark / December 2003

TRADE MARK Artists, Merchandising European Court of Justice C-191/01 The European Court of Justice has upheld the decision of the EU’s Office of Harmonisation of the Internal Market that the brand name ‘double mint’ could not be registered as a trade mark as it was not a mere brand name but a description of a product. Such descriptive words and phrases cannot be registered as they are to be kept free for use for everyone else. A wordmark with several different descriptive meanings is not registrable. Wrigley, who manufacture the chewing gum had won on appeal at the European Court of Fist Instance who accepted that the use of the two words together deprived the phrase of any descriptive function but the ECJ overturned this decision saying that the name is one which other chewing gum manufacturers might legitimately want to use. ECJ C-191/01 23 October 2003 See:

The GHETTOPOLY Version of Monopoly Leads To a Legal Action
Copyright , Trade Mark / December 2003

COPYRIGHT, TRADE MARK Merchandising Whilst the game of Monopoly may be economically out of date (houses in London cost more than a few hundred pounds now) but the makers of board game are to take legal action against spoof version Ghettopoly, which satirises hip-hop culture. The game, based on the traditional family board game, became an instant hit when it went on sale in the US and Europe earlier this year. However, Hasbro, which makes Monopoly, is claiming copyright violation and trademark rights against Ghettopoly. The game sees players get rich through buying stolen properties. In place of the Monopoly top hat, little car and dog players, Ghettopoly players use machine gun, marijuana leaf and basketball icons. According to Ghettopoly creator David Chang, the game also sees “playas” competing with each other by “pimpin’ hoes, building crack houses and getting car jacked”. And instead of Monopoly’s Mayfair or Park Lane, Ghettopoly’s properties include Northside Liquor, The Pawn Shop, Ling Ling’s Massage Parlour or Tyron’s Gun Shop. Apart from copyright and trademark issues, the game has caused outrage in the States. A number of retailers of the game in the US and Europe have decided to stop selling it. The original…

Adidas-Salomon AG v Fitnessworld Trading Ltd
Trade Mark / December 2003

TRADE MARK Merchandising European Court of Justice case C-408/01 This case upheld the decision of the case of Davidoff et Cie SA v Gofkid Ltd (C292/00) and the European Court held that article 5(2) of Directive 89/104/EEC could be used by owners of registered marks to prevent use in relation to services which were both similar to the use of the mark by the registered owner and in relation to goods and services which were not similar. Here Adidas, who have a mark registered at the Benelux Trade Mark Office, wished to use EC trademark law to protect their mark: the mark is three parallel stripes of equal width running on the side and down the length clothing. The stripes are always of a contrasting colour to the base colour of the clothing. The defendant marketed fitness clothing with a similar double stripe motiff. The ECJ held that a member state must offer protection in cases of use by third parties of a later mark or sign which was identical or similar both in relation to goods and services which were not similar, and for goods and services which were covered by the mark’s registration or use. As for the similarities of…

Protecting Existing Marks
Artists , Trade Mark / December 2003

TRADE MARK Artists, Merchandising In the United Kingdom, the Ministry of Defence has filed an application at the UK Patents Office to register the RAF’s red, white and blue ‘target’ or roundel as a trade mark. Registration will include use in clothing. A number of fashion companies have opposed the registration saying that the roundel entered the public domain in the 60s when the ‘mods’ started using the same red, white and blue roundel as a symbol. The owner of the Lambretta clothing company pointed out that the target device had been used since and is closely associated with the style of dress worn by mods, with the band The Who and with the film Quadrophenia which starred Sting and Phil Daniels. The RAF (Royal Air Force) still use the roundel on their military aircraft. In the United States, Native American tribes are seeking to protect their tribal names from commercial exploitation. The tribes point to uses such as the Cherokee Jeep and names for sports teams such as the ‘Redskins’. The tribes have persuaded the US Patent & Trademark Office to created a database of official Native American insignia and logos with the aim of preventing the use of such for…

Copyright , Internet , Trade Mark / October 2003

TRADEMARK, COPYRIGHT Internet Australian Competition and Consumer Commission v. Chen [2003] FCA 897  The Federal Court of Australia recently had to consider whether or not to issue injunctive relief against a US resident given that there was apparently no mechanism available for the enforcement or registration of the Australian injunction in the US courts. The Court heard that the respondent had operated a website which purported to be an official website for the Sydney Opera House and included a mechanism for ‘ordering tickets’. In fact the website had nothing whatsoever to do with the Sydney Opera House and the site contravened Australia’s Trade Practices Act, 1952 (TPA). The court accepted that in reality it could NOT enforce the injunction. However, the court DID make a formal declaration to mark its disapproval of the respondent’s activities, in part because it felt that such might carry some weight with US domestic law enforcement and trade authorities such as the US Federal Trade Commission. The Australian Court also felt that a formal declaration might act as a warning to consumers. See:

Artists , Internet , Record Labels , Trade Mark / October 2003

TRADEMARK Record labels, artists, internet Apple’s new and successful online music store, iTunes, which recently sold its ten millionth download at 99cents, and the Apple iPod, face a legal challenge from Apple Corp, the management company and record label behind the Beatles which was set up in 1968. Apple Corp, based in London, have served papers in the High Court seeking injunctive relief and damages to prevent Apple Computers using the word “Apple” and the Apple Computer’s logo in relation to iTunes and the iPod. It seems that now the Computer company’s activities have spread into the ‘music’ business, Apple Corp is seeking to protect its own business reputation, goodwill and name and is relying on an earlier 1991 agreement it reached with Apple Computers which purportedly prevented Apple Computers using the name Apple or an Apple mark in the music business. Apple Computers were set up in 1977 and the name is allegedly Steve Job’s tribute to the Beatles. The 1991 agreement (which itself was a result of previous litigation over a previous agreement) resulted in Apple Computers agreeing that their use of the Apple name and logo would be restricted to use with computers and never with music….

Copyright , Trade Mark / October 2003

COPYRIGHT, TRADEMARK Book publishing, merchandising Beatrix Potter’s Peter Rabbit books have featured in a recent Chinese court decision where the state-owned Chinese Academy of Social Science Press was fined £30,000 by a district court in Beijing over its translations of Peter Rabbit and three of Potter’s other animal stories without permission. The case was brought by Frederick Warne & Co, which originally published the story in 1902 and is now a subsidiary of Penguin. The case is not a simple copyright case as under Chinese copyright law the literary copyright expired in 1993. Frederick Warne and Co then registered the Chinese characters used in the translation of Peter Rabbit along with all of Potter’s original drawings as trademarks. In Chinese law, copyright subsists for 50 years. In the UK, Potter’s work went briefly out of copyright at the same time, 50 years after Potter’s death in 1943, only to come back into copyright in 1995 when copyright protection for literary works was extended to life of author plus seventy years under the European Directive on Copyright Duration (Directive 93/98). The case is interesting in that the Court accepted that a new IP right was created by use of the drawings…

Trade Mark / October 2003

Trade Mark MERCHANDISING A charity set up in 1994 to refurbish the decaying replica of the famous schooner Bluenose, called Bluenose II, has launched a legal action to protect what it claims are valid and subsisting trade marks and copyrights to the ship and its image. The original Bluenose was a famous Nova Scotia-based sailing ship of the early 20th Century. It appears on Canadian dimes and on Nova Scotia vehicle licence plates. Although the original ship foundered in 1946, a replica was built and purchased by the Nova Scotia Government. Bluenose II has been maintained and operated since 1994 by Bluenose II Preservation Trust Society , funded partly by the Nova Scotia Government. The Society has now begun to assert rights to Bluenose marks and images, on the basis of copyright in design of the ship, acquired from the family of the original ship designer, and on the basis of a number of official marks under registered under federal and province trade mark legislation in Canada. A small souvenir company, Tall Ship Art Productions Ltd. is defending claims by the Society that it has infringed the Society’s trademarks and copyright. Tall Ships has been marketing Bluenose products for 27 years, clearly well before the Society…

Artists , Internet , Record Labels , Trade Mark / September 2003

TRADE MARK Record Companies, Artists, Merchandisers, Internet International Bancorp LLC et all -v- Societe des Bains et du Cercle des Etrangers A Monaco (May 19, 2003) In a split decision a United States Court of Appeal (Fourth Circuit) held that a non-US Company’s use of a non-US trademark in advertising in the United States was enough to give that company trade mark protection under US law despite the fact that the mark was not registered in the US. In US law an unregistered mark can be protectible if it is (a) distinctive and it is (b) “used in commerce”. In this case, concerning the company (SBM) which owns the Casino de Monte Carlo, the court held that extensive advertising in the US and sale of services to US citizens in the USA was sufficient to satisfy the second requirement – that mark was used in commerce – even though the actual business was based in Monte Carlo and the services provided outside of the USA. SBM spent more than $1 million annually on trade fairs, mail shots, telephone marketing and sponsorship. SBM Company maintained a small office in New York. SBM had a valid trade mark registration for ‘Casino de Monte Carlo’ in Monaco….

Artists , Internet , Patents , Record Labels , Trade Mark / September 2003

TRADE MARK, PATENTS Record Labels, Artists, Merchandisers, Internet Kirkbi AG & Lego Canada Inc. -v- Ritvik Holdings Inc. In this case the Federal Court of Appeal held that the design of a lego block was not protected by Trade Mark in Canada and that functional features of a toy design are properly the subject of patent law and not subject to trade-mark protection. The facts of the case where that the Canadian company Megabloks made a building brick very similar to those produced and distributed for decades by the Danish manufacturer, Lego. In an attempt to halt the sale of the Mega Bloks bricks, Lego brought a passing off action on the basis that the Mega Bloks bricks infringed the (unregistered) trade-mark rights of Lego in the distinguishing guise of the bricks particularly the protruding knobs by which the bricks interlocked. The Court of Appeal upheld the decision of the Federal Court, Trial Division who dismissed Lego’s claim and held that due to the doctrine of functionality, the look of the Lego bricks could not be the subject of a valid trade-mark. Functionality is the proper subject matter of patents, not Trade Marks. The Federal Court of Appeal commented that Lego, through…

Internet , Trade Mark / September 2003

TRADE MARK Internet The governments of Canada and Alberta have won disputes over registration of several official-sounding .ca domain names. In each case, the arbitrators ruled that the government has rights to the name and that the domains were registered in bad faith. The federal government won the rights to the domains,, and among others. The government of Alberta won the rights to the domain In the case relating to the federal government claims, the arbitrators found that many of the domain names wereconfusingly similar to the names of government departments, even though they were not quite the same. The arbitrators found that the test is resemblance based on first impression and imperfect recollection. The registrant’s defence was that he had a legitimate interest in the domain names because he planned to use them to criticize the government and specific departments was rejected by the arbitrators, who noted that the domains had been used for different purposes and had been offered for sale by the registrant. In addition, the federal government had previously won similar disputes with the same registrant over .com and .org domain names. See: or For comments on US and Canadian IP law, see E-TIPS:

Artists , Internet , Record Labels , Trade Mark / September 2003

TRADE MARK Record Companies, Artists, Mechandisers, Internet An administrative panel of the World Intellectual Property Organization (WIPO) has recently decided a case under the Uniform Domain Name Dispute Resolution Policy (UDRP) between Eurail (the European joint venture supplying tickets and passes for rail and ship travel in Europe) as Complainant and Epasses of San Francisco as Respondent. Eurail uses the names “Eurailticket” and “Eurail Pass” for its tickets and passes. It has registered “EURAIL” and “EURAILPASS” as trade-marks in the US and other countries. Epasses has a web site offering Eurail Passes and other tickets for use on railways in Europe. The dispute concerned the domain names, and which the Respondent registered. The Panel applied the three-part test set out under paragraph 4 of the UDRP. (1) It ruled that the disputed domain names are confusingly similar to the Complainant’s registered trade-marks. (2) However, a distinction for the purpose of the second part of the test was made between and on the one hand and on the other. In the former case, there was no evidence that Epasses use of the domain names and sites had been illegitimate, especially in view of its legitimate…

Artists , Record Labels , Trade Mark / August 2003

TRADE MARK Artists, Record Labels Boy band BLUE have resolved their dispute with Scottish rock band BLUE over the use of the name with what can be best described as a ‘Mexican stand-off’ where both bands will continue using the same name. As part of the settlement, costs were awarded against the Scottish band but will not be applied for by the ‘New’ Blue or their label (EMI/Virgin) – provided the ‘Old’ Blue do not bring any trade mark application or other formalisation over use of the name. Formed in 1973, Old Blue had argued that their career was being hampered by the new boy band using the same name as them. The Old Blue last had a hit in 1977 when their single Gonna Capture Your Heart got to number 18 in the UK charts. The band have released sixteen singles and seven albums and are primarily a recording band selling CDs by mail order and the Internet. New Blue, formed in 2000, have had seven top 10 hits and three number 1 records in the UK charts in the last three years. Both bands had worked with rock legend Sir Elton John, who had been expected to give evidence. Mr…


COPYRIGHT Artists, Record Labels Football Association Premier League Ltd and others -v- Panini UK Ltd The Court of Appeal has held that the badges and crests of individual English football clubs were the artistic works of the clubs and were entitled to copyright protection. The unlicensed inclusion of these badges, crests and emblems on the stickers of Panini’s Football 2003 Sticker Collection was not an ‘incidental inclusion’ in an artistic work within the meaning of section 3(1) of the Copyright Designs and Patents Act 1988 and therefore an injunction was granted to restrain the defendant distributing those stickers and albums. Lord Justice Chadwick held that where an artistic work in which copyright subsisted appeared in a photograph – because it was part of the setting in which the photographer found his subject, then it could be properly said to be an integral part of the photograph. But to qualify as an exception to infringement, the inclusion of the work must be incidental and on the facts of the case, clearly the inclusion of the badges, crests and emblems was not incidental as it was the basic object of the defendant’s production of stickers and albums. Source: The Times, Law Report, 17 July 2003 See…


TRADE MARK Artists, Record Labels, Internet Associated Newspapers, owners of the Daily Mail, Mail on Sunday and Evening Standard suceeded in a High Court action to prevent rival publishing group Express Newspapers from calling their planned new evening newspaper theEvening Mail or the London Evening Mail. Mr Justic Laddie held that the the proposed title could confuse the general public into believing that the new paper came from the Daily Mail’s stable rather than from a different publishing group. COMMENT : In the United Kingdom trade names and brands are protected both under legislation as statutes (under theTrade Mark Act 1994, EC Directive 89/105) or under the common law doctrine of ‘passing of’. Trade Mark legislation allows for registration of distinctive recognisable marks with an initial protection for twenty years, in effect giving the owner of a registered mark an effective licence for use and exploitation for this period. Protection can now be extended by registering the mark as a Community Trade Mark. Passing off protects traders’ reputation, goodwill or products. No registration is needed but a brand or name must be in established use. It was held in Spalding -v- Grange (1915) that ”no person is entitled to represent his goods as…

Artists , Copyright , Trade Mark / June 2003

COPYRIGHT, TRADEMARK Artists, Merchandising The flamboyant British singer Lady Miss Kier believes a video game has stolen her image including her pink ponytailed hair, short skirt and knee-high boots and signature cry of “Ooh La La.” Miss Keir, who found fame with Deee-Lite, filed the suit in the Los Angeles Superior Court this week against the U.S. arm of video game publisher Sega, alleging the 2000 game “Space Channel 5” used her likeness for the ‘Ulala’ character without her permission and that the name of the character is based on Keir’s own signature ‘Oh La La’. Keir alleges that Sega approached her for permission but still used her image even after she declined to grant a licence to Sega . See

Trade Mark / May 2003

TRADE MARK Merchandising The Court of Appeal has published its decision in the case of Arsenal Football Club Plc -v- Reed substantially overturning the decision of Mr Justice Laddie in the High Court. The Court of Appeal applied the European Court of Justice’s decision that where a third party used in the course of a trade a sign that was identical to a validly registered trademark on goods which were identical to those for which the trademark was registered then the registered owner could prevent this third party use. Mr Justice Laddie had held that the mark ‘Arsenal’ was a badge of allegience rather than indicating the origin of the goods and as Mr Reed had made it clear his goods were not official Arsenal FC goods then he was not infringing the club’s trademark. But the Court of Appeal held that whilst the mark may well be a badge of allegience – that though would not prevent its use by a third party and thus jeopardise the function of a trademark, namely the ability to guarantee origin. The Court therefore held that the High Court should have followed the ECJ’s decision and given judgement for Arsenal. Whilst not strictly…