By Nicola McCormick, Solicitor, Simkins Partnership
In the search for a pithy, apposite book title it is sometimes appealing to reference or parody a well-known brand, phrase or name but will this cause a problem if that name is a registered trade mark? Conversely, what should your response be if someone complains that the book title you thought so original and snappy is in fact a registered trade mark? There is no new law in this area but we have advised on it several times recently and thought it a topic worth revisiting.
We are only concerned here with registered trade marks which are governed by the Trade Marks Act 1994. There have been several cases touching on the topic of book titles and trade marks. The most widely cited of those cases centred around a book about the band Wet Wet Wet. The band name was a trade mark registered in relation to, amongst other things, books. The defendant intended to publish a book entitled “Wet Wet Wet – A Sweet Little Mystery”. This was an unauthorised biography about the band. The band wanted to prevent publication under this title saying it infringed their trade mark. The defendant argued that the name of its publishing company was clearly displayed on the book and that company’s name was the trade mark which was applied to the book. Put another way, they argued that the manner in which the book was presented did not give rise to the inference that the words Wet Wet Wet were being used “as a trade mark” therefore there was no infringement.
The judge did not accept the defendant’s argument but nevertheless allowed them to publish their book for a different reason. His reasoning was as follows: A word such as ‘wet’ may be used in ordinary language, even repeatedly, without amounting to trade mark use (that was not true of all trade marks as some were made-up words and had no ordinary language meaning). However, the use in the book title was plainly use of the band’s name which was a registered mark. The fact that its use was descriptive of the contents of the book (rather than indicating the publisher/source of the book) did not mean it was not used “as a trade mark” which was capable of infringing the registered trade mark.
Whilst on the face of it the title of the book infringed the trade mark there was a get out for the defendant. The Trade Mark Act provides that a registered trade mark is not infringed by use (amongst other things) of an “indication concerning the characteristics of goods”. The judge deliberated for some time on whether or not use of the book title fell within this exemption but he finally decided that the defendant had used the trade mark Wet Wet Wet to describe the characteristic [of the contents] of the book and therefore there was no infringement.
This case appeared to give the green light to the use of registered trade marks in the title of unauthorised biographies about the proprietor of the trade mark. But that is not the end of the issue. In a 2003 case touching on this subject matter in the context of criminal proceedings, the House of Lords said that disputes about books and registered trade marks “could not easily be resolved by a single test” which effectively means that the Wet Wet Wet case cannot be wholly relied upon. Further decisions have suggested that the Wet Wet Wet trade mark might not even have been valid in terms of its registration in respect of books.
So what about the inadvertent inclusion of a trade mark in your book title? Following the earlier reasoning, if you are using words in a combination, which has ordinary English meaning, and not in a way that is a reference to the trade mark proprietor then this should not amount to infringement of the registered trade mark.
The outstanding area of uncertainty is in circumstances where you make a reference to a trade mark which is gratuitous and bears no reference to the content of the book. For example, “The Spice Girls Ate My Homework” for a fictional story which does not feature the Spice Girls might pose quite a dilemma. It is clearly a reference to the band and therefore their trade mark which, on the Wet Wet Wet analysis, amounts to trade mark use. It is not descriptive of the characteristics of the books so doesn’t fall within the exemption so is it infringement?
In cases since Wet Wet Wet opinions have varied as to whether or not “trade mark use” is in fact an essential pre requisite to the finding of trade mark infringement. One question that is frequently preferred in analysing whether infringement has taken place is whether the use of the words complained of damages the “essential function” of the registered trade mark i.e. the ability to distinguish goods. The answer to that question is almost always a matter which turns on the evidence of use in a particular case. In the Spice Girls example you are quite likely to find lawyers’ opinions divided as to whether it is an infringement.
So what practical tips can we draw from the present landscape of cases?
1. If you are referencing a band, brand or name in your title, check the trade mark register.
2. If the name is registered, are you genuinely using it to describe the book’s contents? If not, reconsider.
3. Are you trying to provoke interest by referencing a trade mark even though it is unconnected to the book? If so, consider how you will justify this.