UK News

Snippets.....................

Nearly ten years ago, in a landmark decision, the English Court of Appeal decided that the trade mark Elvis Presley was non-distinctive for merchandising products in Class 3. The Court’s reasoning was that members of the public purchase Elvis Presley merchandise not because it comes from a particular source, but because it carries the name or image of the deceased star.

A few years later, however, the English High Court found that the trade mark Arsenal, the name of a well known, London-based football club, was registrable for merchandise, even though it had long been used by third parties in relation to unauthorised products that were generally sold outside the ground on match days.

These two, apparently conflicting, cases threw the UK Trade Mark Office’s position on the registrability of famous names into a state of some confusion. The situation in this important area remains unclear.

Down in Alicante, however, OHIM has no such doubts about the registrability of famous names. The names of individuals, living or deceased, groups, active or defunct, and sporting clubs, successful or not, are all accepted, without any questions being asked, as CTM registrations.

It is therefore not surprising that the trade mark world is voting with its feet and increasingly choosing to use the CTM route to protect famous names. Take the name Elvis Presley, for instance. Since it was unjustifiably taken off the UK register, it has been protected not once, but twice, as a CTM. The CTM registrations cover not only recordings, but also, rather optimistically, concerts, and, perhaps not surprisingly, the provision of food and drink.

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