TRADE MARK
Artists, Merchandising

Sir Alex Ferguson, manager of the iconic and world famous Manchester United Football Club has claimed that his human rights have been abused after the United Kingdom’s Trade Mark registry (Patents Office) refused an application to trade mark his name for posters because he is ‘too famous’. The adjudicator, Charles Hamilton, found that when consumer purchased a poster featuring Ferguson’s name they would not think that this was an ‘endorsement’ by the manager. The test is whether or not a consumer buying the poster thought that ‘Alex Ferguson’ referred to the person featured on the poster OR to the person who made the poster. If it only applies to the former then no protection will be granted as this is just descriptive. This is has led to the position that non famous sports, entertainment and music stars can trade mark their (distinctive) names before they are famous but once a name passes into the public’s consciousness it is far more difficult to secure a registration especially for items such as posters where a name would not be seen as a ‘badge of origin’, merely a name on that poster which may or may not be endorsed by the person or persons featured. However the decision does not extend to clothes, jewellery, commemorative coins and other merchandise where Sir Alex is expected to successfully secure trade mark protection in the UK. The band Linkin Park 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 the 1970 “Tarzan” application 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 Times, 9 October 2005
Law Updates May 2005 (In the matter of Application 2313504 in the name of Linkin Park LLC)

http://www.patent.gov.uk/tm/legal/decisions/2005/o03505.pdf

See also the decision of the Court of Appeal in Arsenal Football Club Plc -v- Reed (Law Updates May 2003). In almost any other area of merchandise then a valid trade mark WILL be protected against third party use and the question of ‘badge of origin’ or ‘badge of allegiance’ would not be relevant. In Arsenal v Reed the European Court of Justice held that unauthorised use of ‘badges of allegiance’ were protected by trade mark law. Mr Reed’s use of the signs created an impression of a link between the goods he sold and AFC and so AFC as the proprietor [of a registered mark] was entitled to prevent unauthorised use of their marks. Whilst the ECJ decision was less than clear the Court of Appeal held that non trade mark use could amount to infringement where it undermined the essential function of a registered trade mark which is to identify the origin of the goods. In his leading judgment Aldous, LJ stated: “As the ECJ pointed out, the actions of Mr Reed meant that goods not coming from Arsenal but bearing the trade marks, were in circulation. That affected the ability of the trade marks to guarantee the origin of the goods.” This appears to introduce the principle of “dilution” into UK trade mark law. Under this principle the rights of the trade mark proprietor go beyond preventing use by others of the trade mark to mislead consumers and enable the proprietor to prevent use by others simply to protect the exclusivity of the trade mark and the goodwill associated with it (additional summary by Dominic Free of the Simkins Partnership).

This decision, taken alongside the Linkin Park case (and earlier authorities such as Elvis Presley Trade Marks [1999] RPC 567and Tarzan Trade Marks [1970] RPC 450) and Irvine v Talksport Ltd [2002] EWHC 367 mean that whilst a celebrities name or mark can be protected as a badge of origin and can, to an extent, be used to prevent commercial use of an person’s image by way commercial endorsement – it cannot be effective when a poster merely features the person as the subject of the poster – then the mark cannot be protected. Even with the name of bands on (bootleg) CDs the issue of trademark infringement is not 100% clear. However the leading House of Lords authority, R v Johnson(2003) UKHL 28 suggests that putting ‘Bon Jovi’ or U2′ on a CD cover without permission will be a trade mark infringement in as much as it indicates that the contents of the CD are from a source known as ‘Bon Jovi’ or ‘U2’. However this will depend on the facts of the case – it does not necessarily follow that the use of the name of a performer or author acts as a indication of the trade origin or a CD or book which embodies the performance or work – The use could indicate that the band or performer had authorized the CD – the use could be passing off – or the use could just be descriptive. See also the dissenting judgment of Davies J in the Australian case of Musidor BV v Tansing (1994) 123 ALR 594 and Sutherland v V2 Music [2002] EWHC 14. This is a highly contentious area and one which where those who wish to register trade marks of personal or band names need expert help.