| Trade marks and passing off | 11 |
INTRODUCTION
Although copyright can be a powerful form of legal protection for published (and unpublished) works, there may be some key words, names or phrases, or other distinguishing signs (such as a logo) which could be protected independently as trade marks under UK law. They may include titles of books or journals, names of authors, or names of characters ranging from Peter Rabbit to Gandalf to Harry Potter. They have become increasingly important to the publishing trade in recent years as a means of protecting properties with merchandising potential, but it is important to recognise that they are not just a useful means of protecting characters in children’s books, and licensing T-shirts and novelty soap, but may also be an extremely valuable form of protection for database, reference and general publishing and all kinds of distinctive publishing marks. Publishers, authors and agents should at all times consider the trade mark implications of the material they are handling, for two reasons:
• to protect as soon as possible names or other signs with valuable trade mark potential;
• to avoid infringing any existing trade marks.
WHAT IS A TRADE MARK?
Under section 1(1) of the Trade Marks Act 1994:
A trade mark means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.
• ‘Any sign’. Although ‘sign’ is not defined, section 1(1) of the 1994 Act goes on to specify that a trade mark may consist of ‘words (including personal names), designs, letters, numerals or the shape of goods or their packaging’.
• ‘Capable of being represented graphically’. This includes not only two-dimensional marks, but three-dimensional shapes (such as the famous Coca-Cola bottle) and sounds capable of being reduced to musical notation, such as advertising jingles. This requirement is to be removed.
• ‘Capable of distinguishing goods or services’. This is a central requirement of any trade mark, and we will return to this later. For the present, note that the mark, in order to be registered, does not need to distinguish goods or services at the time of filing as long as it is capable of doing so. In addition, in the UK the proprietor has to have a bona fide intention to use the mark at the time the application is made.
WHAT MAY BE REGISTERED?
Under present UK law, all the following familiar publishing signs may be registrable as trade marks, provided the UK Intellectual Property Office is satisfied that they are capable of distinguishing the relevant goods or services from others:
• single letters, or sets of initials
• single words
• proper names
• names of authors
• names of characters
• titles
• phrases or slogans
• logos and other designs
• the distinctive shape or size of a publication.
Logos or designs (known as ‘devices’) are often more distinctive than ordinary words or phrases, and therefore easier to register: the first trade mark registered in the UK was the Bass triangle, and the Guinness harp was close behind.
As a general rule, words or other marks may not be registered if they are generic, or descriptive of the goods in question, and which consist exclusively of signs which (in the words of the 1994 Act):
• ‘designate the kind, quality, quantity, intended purpose, value, geographical origin (or) time of production’ of goods or services; or
• have become customary in the language or practices of the trade.
However, such objections may be overcome with sufficient evidence of distinctiveness through use.
WORDS AND PHRASES
Given the above guidelines, the words most likely to be capable of registration as trade marks are those with no obvious descriptive or generic link with the product. The best trade marks are often invented words: meaningless but punchy and with no generic connection to anything at all, such as Kodak, Persil, Typhoo or Lego.
Known or existing words can be used, if completely unassociated with the product – ‘Mars’ for chocolate, for example. Composite words may also be registered successfully if ‘invented’, such as Coca-Cola and Starbucks. A geographical name may be registered, but may require evidence of distinctiveness in the market place, and several years’ continuous use.
It had been difficult to register slogans and taglines as they were regarded as promotional statements, not trade marks. However, when considering the Audi tagline VORSPRUNG DURCH TECHNIK the Community Trade Mark Office (see p. 302) held that the fact that a slogan may be perceived as a promotional statement does not mean it is not distinctive and cannot be a trade mark. The Office also stated that a slogan does not need to be imaginative or a play on words to be registrable as a trade mark. However registration of slogans and taglines is not straightforward.
TITLES
Although many titles may lack the necessary substance and originality to attract copyright protection, book, journal, or other titles may be registered as trade marks. The names of serial publications such as directories, newspapers or magazines can be registered. Hello!, OK!, Heat and Woman’s Weekly are UK-registered trade marks for publications or magazines. An application in 1986 for Radio Times proceeded to registration claiming use of over 60 years from 1923.
If no registration has been obtained (either because the application has failed or because none has been made) a title may still be protected by an action for ‘passing off’ (the closest English law has so far come to an unfair competition action). There must, however, be a real likelihood of confusion, and also actual or probable damage or loss, before a passing-off action will succeed against a rival title: for more on this see below, p. 302.
The difficulties of stopping third parties using titles if there are no registered trade marks are illustrated by the James Bond cases. The owner of the James Bond trade mark rights unsuccessfully opposed a UK trade mark application for FROM RUSSIA WITH LOVE for jewellery and watches. It did not have any relevant trade mark registrations and there was no misrepresentation necessary to succeed in passing off (see p. 302).
It also unsuccessfully opposed a Community trade mark (see p. 302) for DR NO covering software, vehicles, clothing and other goods as the authorities found it had not used DR NO as a trade mark.
These cases confirm that titles (and character names) should generally be registered as trade marks as early as possible and that the titles and names should be used as trade marks (that is as an indication of origin) rather than descriptively.
AUTHORS’ NAMES
An author’s name can be registered if it is distinctive. This applies to serial publications or to established works which have run to several editions. Wisden or Roget would be good examples.
A nom-de-plume may be difficult to register. The established user may well have an action for passing off against others using the same name. A signature (of a cartoonist, for example) may be hard to register. It should not be forgotten that an author has a statutory moral right in some circumstances to prevent false attribution to him or her of work which the author did not write (see Chapter 4, p. 83). There may also in some circumstances be an action for defamation (see Chapter 8) or an action for breach of the Data Protection Act (a signature is personal data, using it amounts to processing, etc.).
NAMES OF CHARACTERS
The names of fictional characters can be registered for any goods or services provided they indicate the goods or services of the trade mark owner. If the fictional character has become well known and long established, it may no longer serve to indicate any one trade mark owner and consumers may view the mark as the name of the story or character instead. In this case the sign may not be registrable as it is non-distinctive and descriptive. The UK Trade Mark Office give the example of ‘Sherlock Holmes’ as one which is devoid of any distinctive character and descriptive of books and films featuring that character. They contrast this with ‘Spiderman’ where the name has been used by one party for magazines and may be capable of acting as a trade mark. The question is whether the name acts as a ‘badge of origin’ regardless of whether the trade mark applicant owns the copyright.
The UK Trade Mark Office also state that in respect of well-known and long-established fictional characters (particularly characters in the children’s field, such as ‘Cinderella’), an application for goods such as soap, clothing and jewellery may be objected to on the grounds that the mark is non-distinctive and descriptive.
It is also possible to register representations of well-known characters and these may be acceptable if they are distinctive.
The Trade Marks Registry have issued guidelines on registering famous names as trade marks: they will not automatically refuse applications for famous names but will consider whether the name is descriptive for the goods and services in question. Name of famous people or groups may be registrable for printed publications. However, the Registry will not in general allow famous names to be registered for what they call ‘mere image carriers’, such as posters and photographs. The name of the famous person is not likely to be seen as an indication of origin but a description of the subject matter. The US rock group Linkin Park applied to register their name for a wide variety of goods, including image carriers. However, the Registry rejected the application for posters, poster books and other goods.
HOW TO REGISTER A TRADE MARK
Provided there is no opposition, it is possible to secure UK registration for a registered trade mark in six months. It is normally advisable to seek advice from a specialist trade mark lawyer before commencing an application.
Applications should be made to the UK Intellectual Property Office, who will need the following information:
(1) details of the applicant (for example, whether an individual, partnership or company, and whether or not resident in the UK);
(2) the particular goods or services for which the applicant is seeking to register the trade mark (see below);
(3) if a particular typeface, or a logo/device is involved, a representation of the proposed mark;
(4) a statement that the applicant (or a third party with the applicant’s consent) is already using the mark in relation to the specified goods or services, or intends to do so.
Classes of goods and services
The UK Trade Marks Registry is divided into classes of goods and services. There are 45 classes in all, ranging from chemicals and drugs to clothing, games and playthings and (of course), beer. Books are included in Class 16. Publications which are downloadable fall within Class 9 and publications which are non-downloadable fall within Class 41. It is possible to register a trade mark for certain online services and retail services including Internet and online shopping. One of the most important things to grasp about trade marks is that protection is given for specified goods or services. However, one application can be filed covering one, several (or all) of the 45 possible classes.
Advertisement and opposition
Once an application has been examined by the Trade Marks Registry, it is advertised online in the Trade Marks Journal in order to enable other interested parties to oppose it if they think it will conflict with an existing mark (or prior application) of theirs, or otherwise cause confusion. Opponents must oppose within two months of the date of advertisement (or within that period obtain an extension of time of one month to oppose). If the opposition cannot be settled the matter may be resolved at a hearing, at which both sides may be represented.
Assuming that there is no opposition, or that any opposition is defeated, registration will then be granted for the particular goods and services concerned. Trade mark registration lasts for 10 years initially, but may be renewed indefinitely upon payment of renewal fees. The most famous marks are renewed regularly. Unlike copyright, therefore, which expires 70 years after the end of the year of the author’s death, trade mark protection may last forever – as long as your mark is used in relation to the goods and services it covers and is not challenged (for example, for becoming generic) and you remember to pay the renewal fees.
There is no legal requirement, incidentally, to use the ®, although most proprietors find it a useful warning that their mark has been registered. There is certainly no requirement on authors, or editors of dictionaries, to use the ® sign whenever the word occurs: such advertising is the responsibility of the proprietor. One often also sees the letters TM in a circle: this has no legal significance whatsoever and indicates that the person using the mark regards it as a ‘trade mark’ whether it is registered or not. It should be noted that it is a criminal offence to represent a mark as a registered trade mark in the UK if it is not.
The proprietor of a trade mark is in a very strong commercial position. Once the mark is registered, the proprietor acquires what amount to virtual monopoly rights over exploitation for that particular mark applied to the particular goods or services concerned. There may, however, be provision for individual words, or other elements, of the registered mark to be disclaimed – so that while ‘Peter Rabbit’ may be registered as a single mark, the individual words ‘Peter’ and ‘Rabbit’ may need to be disclaimed since individually they are too common, and non-distinctive of the particular goods concerned, to be protected. The Registry cannot, however, now insist on disclaimers and they have to be offered voluntarily.
TRADE MARK INFRINGEMENT
Section 10(1) of the 1994 Trade Marks Act provides that:
A person infringes a registered trade mark if he uses in the course of trade a sign that is identical with the trade mark in relation to goods or services which are identical with those for which it is registered.
Section 10(2) further provides that infringement may take place where the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the mark is registered or the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the mark is registered in relation to, but where in either case there nevertheless exists a likelihood of confusion on the part of the public, including the likelihood that the public will associate the infringing mark with the registered trade mark. If the sign merely brings the registered trade mark to mind, this is probably insufficient.
Under section 10(3), infringement can occur if the mark is used in a way that ‘takes unfair advantage of’ or is ‘detrimental’ to the mark where the trade mark has a reputation in the UK. Confusion is not necessary. For use of registered trade marks in comparative advertising, see Chapter 13.
Certain proprietors of trade marks are vigilant about any unauthorised use of their marks, and often write standard threatening letters to publishers when they spot ‘their’ word or other mark in, say, a book title. Care should be taken in writing such letters as in certain circumstances a person aggrieved by such a letter could bring an action in relation to the threat of proceedings being brought for registered trade mark infringement. Infringement is unlikely to occur, however, if the use is purely descriptive.
In the Scottish case of Bravado Merchandising Services Limited v. Mainstream Publishing (Edinburgh) Limited, the registered owners of the trade mark ‘Wet Wet Wet’ failed to prevent a publisher – Mainstream – from marketing a book entitled A Sweet Little Mystery – Wet Wet Wet: The Inside Story as this use of Wet Wet Wet did not infringe the trademark registration.
In another case, the judge referred to the Wet Wet Wet decision, stating: ‘It would be fantastic if the . . . trade mark legislation had the effect of enabling quasi censorship of books about people or companies just because those people or companies had registered their names as trade marks for books.’
You may even succeed in having an existing registration revoked if you can establish that the word concerned has become a generic term in its own right (inclusion in The Oxford English Dictionary is useful evidence, despite the editorial disclaimers one sometimes sees in dictionaries).
Advertisers can purchase other businesses’ trade marks as Internet search engine terms (‘keywords’) and so appear in the top-ranked ‘sponsored links’ in search engine results, linking Internet users to competing or even counterfeit product websites. The CJEU held that Google does not infringe the trade marks in question by selling the keywords to unauthorised advertisers or arranging their display as sponsored links on the basis Google is not making relevant use of those marks. Google (and other search engines) may be liable if it does not remove or disable infringing data once it has been put on notice or if it has more than a neutral role and is involved in the selection of infringing keywords or the drafting of the advertisement displayed with the sponsored link (‘the ad text’).
However trade mark owners will be entitled to challenge unauthorised advertisers, on a case-by-case basis, where ad text suggests that the advertiser is authorised by or otherwise connected with the trade mark owner, or is too vague for reasonably informed and attentive Internet users to determine whether there is such a connection.
Where trade mark infringement does take place, however, the normal legal remedies will apply, including:
• an injunction to restrain infringing acts;
• an award of damages, or an account of profits;
• provisions for delivery up of infringing goods, material or articles.
EU AND INTERNATIONAL TRADE MARK PROTECTION
Registration of a trade mark in the UK only gives protection within the United Kingdom. If trade mark protection in other territories – such as the USA – is required additional applications will have to be filed. For an international publishing business seeking worldwide protection, this can prove expensive; however, it is often worthwhile for distinctive international publishing marks, particularly as an added deterrent to piracy.
It is possible to file one trade mark application to cover all 28 countries of the European Union including the UK via the Community Trade Mark Office in Alicante, Spain. Advertisement and opposition procedures are similar to those under UK law, and the period of protection is 10 years. The Community trade mark is an all or nothing mark and has to be available in all EU countries. If there are earlier rights in any one country, the Community application fails although it is possible to convert it into separate national applications.
The Community Trade Marks Office examines applications on absolute grounds only, that is, for example, if the application is distinctive. Like the UK Trade Mark Office, it does not refuse applications on the grounds of earlier conflicting rights. It is cheaper to register a trade mark as a Community trade mark rather than filing national applications in each of the member countries. Infringement of a Community trade mark may be pursued centrally in one national court rather than separately in each member state where infringement has occurred and it is possible to obtain an injunction covering all of the EU.
International trade marks
It is possible for UK companies to file one single application at the World Intellectual Property Organisation (WIPO) under an agreement called the Madrid Protocol (to which the UK is a party) covering some or all of the nearly 100 (at the time of writing) countries and organisations who are signatories to the Madrid Protocol. Countries who have signed the Madrid Protocol include various European countries, the USA and Japan. Unlike the Community trade mark, the Madrid Protocol system provides for a number of separate national trade marks and is a useful means of international trade mark protection as more countries sign the Madrid Protocol.
THE TORT OF ‘PASSING OFF’
Even without a registered trade mark, it is still possible over a period of time to acquire goodwill in a distinctive name or title, or in the distinctive style, design or general physical appearance of goods (known as their ‘get-up’). Under common law, such trading goodwill will be protected against rival traders who may seek to use it unfairly in order to enhance sales of their own (usually more recent) product. The general principle of law was stated as long ago as 1896 in the leading Camel Hair Belting case, as follows:
The principle of law may be very plainly stated, that nobody has any right to represent his goods as the goods of somebody else.
Prior to that case, it might have been thought that ‘Camel Hair Belting’ was just about as generic a product description as it was possible to have, and that any rival trader seeking to start selling belting made out of camel hair could not legally be prevented from using the same generic description. However, ‘Camel Hair Belting’ had by the time of the action acquired such established goodwill, and such a distinctive reputation, in the market place that the action for passing off succeeded. Many publications, or lists, acquire a similar goodwill in their name or physical get-up – famous labels such as Puffin and Penguin would be similarly protectable under the law of passing off. Such common-law protection is not ideal and many of our trading partners, in Europe and the USA, deal with the matter somewhat more logically under fully fledged unfair competition laws. If the evidence is strong enough, however, our action for passing off can be an effective way of preventing such unfair competition under both English and Scottish law.
In the Advocaat case, the court identified the following characteristics which must be present in order to succeed in passing off:
(1) A misrepresentation.
(2) Made by a trader in the course of trade.
(3) To prospective customers of his or ultimate consumers of goods or services supplied by him.
(4) Which is calculated to injure the business or goodwill of another (in the sense that this is a reasonably foreseeable consequence).
(5) Which causes actual damage to a business or goodwill of a trader by whom the action is brought or will probably do so.
Passing-off actions under English law, as a general rule, will not succeed unless there is a real likelihood of confusion in the market place – this can usually be established by market surveys, but these take time and are not always conclusive.
Passing-off cases include the following: the publishers of the Daily Mail secured an injunction against a new evening newspaper called the London Evening Mail. The publishers of a series of free newspapers including Bedfordshire on Sunday, Milton Keynes on Sunday and Hertfordshire on Sunday were granted an injunction to prevent the free newspaper Northants on Sunday.
The publishers of the well-established What’s New In . . . series of magazines secured an injunction against What’s New In Training Personnel since in that case the risks of confusion, to public and advertisers alike, were great.
On the other hand, an injunction was refused to the claimant in respect of the two magazines BBC Gourmet Good Food and Gourmet as the court found the public would not be confused. In another case, it was arguable that the public would think Management Today and Security Management Today were linked, although the injunction was refused.
The politician Alan Clark succeeded in a passing-off action against the Evening Standard for publishing a diary ‘Alan Clark’s Secret Political Diary’.
Most publishers, of course, go to considerable lengths to create and establish their own distinctive name and get-up, but there are always those who will seek to cut corners by linking their product unfairly to the goodwill established by someone else. Any new publisher launching a weekly trade journal for booksellers and publishers in the UK under the title The Bookseller, particularly if it used a similar design and get-up, runs the risk of an action for passing-off. There might equally be an action for passing off against a publisher who tried to launch a new publication called, for example, The Electronic Bookseller, if the getup was confusingly similar and there was an implication – as there probably would be – that the new product was being launched by the publishers of The Bookseller, or under licence from them, and carried with it their considerable reputation and goodwill.
If there is a real likelihood of confusion, a passing-off action may well succeed. It is, however, a question of fact in every case.
Where there really is no credible risk of confusion in the market place, an action for passing off will fail: in the case of Mothercare UK Limited v. Penguin Books Limited a passing-off action to restrain the use of the words ‘mother care’ in the title of a book Mother Care/Other Care published by Penguin Books Limited failed. In the view of the Court of Appeal, the requirement for a successful passing-off action that there should have been a misrepresentation (see above, p. 303) had not been established and the court ‘was wholly unable to see any basis for saying that there was a misrepresentation in the title of the book. The book, taken as a whole, did not begin to suggest that the book had been issued or sponsored by, or was in any way associated with Mothercare.’
REMEDIES
Where passing off is established, the most effective remedy a claimant will usually seek is an injunction, and the usual considerations will apply (see above, p. 277). Damages, or an account of profits, will also be available in appropriate cases.
Domain names (.com.co.uk, etc.) are valuable and important. At the same time the number of domain name disputes continues to grow. This is particularly so as more domain name extensions and multi-lingual domain names are added to the Web.
There are two principal types of domain name disputes, both of which arise where the defendant registers a domain name that is identical or confusingly similar to the claimant’s trade mark. The first occurs where the defendant registers the name fraudulently, and is known as ‘cybersquatting’ (or ‘typosquatting’, where likely misspellings of the mark are registered). The second kind of dispute is where the defendant registers the name innocently and uses it for a legitimate website, but in circumstances where Internet users are likely to be confused into believing that the website is the claimant’s.
A third type of dispute is where a ‘spoof’ or ‘gripe’ website is set up. One case involved the website NatWestSucks.com.
Under English law, the registration and use of a domain name in the situations described above may amount to common law passing off and/or registered trade mark infringement. The following principles have emerged.
CYBERSQUATTING
The courts, starting with the High Court and the Court of Appeal in Marks & Spencer v. One in a Million, have shown a determination to stop cybersquatters. This has been on the basis that a cybersquatter registers a domain name as an ‘instrument of fraud’ and that this will inherently mislead Internet users as to the origin of the domain name or dilute the claimant’s mark. It has been held that:
• The mere registration of a domain name will be unlawful where the name is identical or confusingly similar to a household mark that is exclusively distinctive of the claimant, even in the absence of attempted extortion or blackmail. The claimant will only succeed on this ground if the mark is very well known and distinctive, like the Marks & Spencer mark in the One in a Million case, such that consumers are inherently likely to be misled.
• The mere registration of a lesser-known mark, or of a mark which, although famous, is not exclusively distinctive of the claimant because it consists of a common or descriptive name, will be unlawful if coupled with attempted extortion or blackmail – e.g. the J. Sainsbury mark in the One in a Million case.
• A ‘pattern’ of registering well-known marks as domain names will usually amount to good evidence of cybersquatting.
LEGITIMATE USE
Where the defendant is not a cybersquatter, the registration and use of the domain name will only be unlawful where traditional passing off or registered trade mark infringement principles apply. In broad terms, this requires the claimant to show that Internet users are likely to be confused into believing that the products or services offered through the defendant’s website originate from or are otherwise connected with the claimant.
DOMAIN NAME DISPUTE RESOLUTION PROCEEDINGS
An alternative to bringing court proceedings is to file a complaint under the relevant domain name dispute resolution policy. ICANN (Internet Corporation for Assigned Names and Numbers) has established a Uniform Domain Name Dispute Resolution Policy (UDRP) in respect of .com, .net, .org and a limited number of country code domain names. A domain name can be either cancelled or transferred to the complainant. These proceedings are significantly cheaper and usually quicker than court proceedings. However, they generally only apply to cybersquatting or cases where ‘bad faith’ on the respondent’s part can be shown. Damages cannot be awarded nor can costs. They also do not cover.uk country-code domain names. Nominet UK, the Registry for.uk domain names, has its own dispute resolution service which is very similar to the UDRP.
Complaints are decided by single- to three-member panels composed of legal practitioners from around the world. In order to succeed in the proceedings a complainant has to satisfy the following three elements.
The domain name must be identical or confusingly similar to a trade mark in which the complainant has rights.
Decisions have protected registered trade names. Panels have also recognised that writers (such as Louis de Bernières, Margaret Drabble and Catherine Cookson), actors (such as Kevin Spacey and Tom Cruise), singers (e.g. Celine Dion) and sports stars (e.g. Venus and Serena Williams) can own unregistered rights in their names. (In contrast, as already seen, English courts have traditionally been somewhat reluctant to enforce personalities’ rights in their names, on the basis that, in general, their reputations do not grant them rights that extend beyond their core activities.)
The respondent must have no rights or legitimate interests in respect of the domain name.
Legitimate interest may be demonstrated where the respondent is making a legitimate non-commercial or fair use of the domain name, without intending misleadingly to divert Internet users or tarnish the complainant’s trade mark. A respondent was able to rely on this ground in brucespringsteen.com where he was using the domain name in connection with an unofficial Bruce Springsteen website. This proviso is also relevant to ‘gripe’ websites for persons who have genuine grievances or wish to express criticisms. Such views on a website may, however, be subject to defamation and trade libel laws and can, in certain circumstances, be removed from the Internet if a complaint is made against the Internet service provider (ISP) hosting the site.
The domain name must have been registered and be used in bad faith.
This may happen if, for example, the aim is to resell it to the complainant or to a competitor for a sum exceeding the respondent’s out-of-pocket costs or registering the domain name to prevent the complainant from registering that domain name which contains its mark or to disrupt the complainant’s business.