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 of the goods being sought rather than referring to the origin of the goods. Furthermore, it would be difficult for a trader to market competing posters without using the mark to describe them. It should be noted, however, that this example was limited to posters of a musical group and that registration of a band’s name for audio CDs would be a different matter. The Appointed Person noted that “use of the words ‘Rolling Stones’ [on a CD case] . will inform the public that the article is a recording of that group and that it is authorised by them.” Furthermore, CD covers also have the alternative protections of copyright which a rightsholder tends to more readily assert. Because consumers are less likely to infer an origin of goods in the case of posters, a line is drawn between “media” and “mere image carriers”. Thus, unless a band can show an established reputation for supplying and selling their own “authorised” posters, the band can expect difficulty in registering their name for such purposes.
The full text of the judgment may be accessed via:http://www.patent.gov.uk/tm/legal/decisions/2005/o03505.pdf
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