• IN THE REGISTRY

    Practice Point

    There have been a number of changes in UK Trade Marks Registry practice in recent months and in this edition of Make Your Mark we look at two of them.

     

    Geographical Names as Trade Marks

    Regular readers will recall that we outlined the rules relating to the acceptance of geographical place names as trade marks in the Spring 1999 edition of Make Your Mark. This was followed in the Autumn 1999 edition by a review of the European Court of Justice (ECJ) Chiemsee judgement. This case was important in relation to the assessment of the registrability of geographical names as trade marks and the factors which must be taken into account by Trade Marks Offices or Courts when making this assessment.

    As a result of Chiemsee, the UK Trade Marks Registry has amended its practice in relation to geographical names. The UK practice in this area has always been based on population figures and that continues to be the case. However, much more account will now be taken of whether it is “reasonable to assume” that a geographical name is likely to be used in the future as an indicator of origin for the goods or services in question.

    As a general principle, the UK Registry should now accept the following geographical place names as inherently distinctive trade marks:

    Places in the UK with a population of less than 10,000 (previously 2,000) unless

    - The place already has a reputation for the goods/services,

    - Because of its characteristics, it is liable to be used as a name indicating geographical origin of the goods/services, or

    - The application is for services of a local nature and the population figure exceeds 5,000.

    • Geographical names that are unlikely to be used as a geographical indication for the goods/services claimed. The previous practice quoted the example of North Pole for bananas as a mark acceptable in this category. This is now considered to be somewhat extreme. The test is no longer to be whether it is impossible for the goods or services to originate from that place but whether it is likely that the trade mark will strike the relevant public as fanciful when used in relation to those goods/services. Places in the UK with a population exceeding 10,000, but only if it is not reasonable to assume that the name is liable to be used in the foreseeable future as a geographical indication of the goods/services concerned.

    • Names of lakes, seas or mountains if the location has no reputation relevant to the goods/services claimed. For example Honister (a mountain pass known for its natural slate) would be objectionable in relation to goods made from slate but is unlikely to attract objection in relation to market research services. Names of districts in the UK (other than districts of London) unless applied for in respect of services of a local nature for which the district has a reputation.

    • Names of districts in London unless they are known for the goods or services claimed. Non-UK place names within the European Union with a population of less than 100,000 unless the place enjoys a reputation in the goods/services claimed or the services are of a type likely to be provided in the UK from overseas.

    • Non-UK place names within the European Union with a population exceeding 100,000, unless the characteristics of that place make it likely to be seen as a source of the goods or services.

    • Foreign place names outside the EU, provided the place does not have a reputation for the goods or services claimed and it is not “reasonable to assume” that the goods or services will be imported into or provided in the UK from that place.

     

    Comment

    Whilst the UK Registry slowly liberalises its practice on geographical place names, it is possible that the laissez faire attitude of OHIM to these matters may soon be the subject of a review (see the cancellation of the CTM registration for Chiemsee mentioned at page ? of this issue). The likelihood is therefore that, in the medium term, the two offices will be operating to similar standards.

    Famous Names and Images as Trade Marks

    The Court of Appeal judgement in the Elvis case (see Make Your Mark, Autumn 1999) has led to a change in Registry practice in relation to the acceptance as trade marks of the names and/or images of famous people. Despite the fact that the Elvis case was decided under the old 1938 UK Trade Marks Act, the fundamental requirement for a trade mark to be registrable under the 1994 Act remains that it must be capable of distinguishing the goods or services of one trader from those of another. The findings in the Elvis judgement are therefore believed by the Registry to be an appropriate basis for updating the practice in this area.

    From now on, the practice on the registability of famous names and/or images will be as follows:

    If the application is not filed by the famous person or with his consent, then it will be refused on the ground of bad faith. Where the application is made in good faith, however, the Registry will then consider whether the name or image is distinctive as a trade mark. Factors affecting this decision include:

    • Whether there is any existing connection between the person and the product claimed;

    • Whether the name or image is likely to be seen as a trade mark or just as a description of the nature of the product (e.g. a film about the person or memorabilia associated with the person);

    • Whether the fame of the person is likely to attract a wide demand for memorabilia (e.g. film stars and popular music icons are more likely to attract a demand for memorabilia than are famous scientists or politicians);

    • Whether the applicant was trading in the goods or licensing his name for trade in those goods prior to the application being filed;

    • Whether the name or image is already in the public domain, through use by others, in a descriptive sense (e.g. posters and souvenirs relating to the person);

    • Any other factors which may lead the public to suppose the goods/services are offered by the person or with his consent.

     

    Comment

    It has, over the last 20 or so years, become much more common for famous people, particularly “personalities” in the entertainment (including sport) area, to diversify, by using the property in their own names and images to engage in wider activities. Many famous people are connected with, for example, product endorsement (Gary Lineker, Vinnie Jones and Jennifer Aniston) and product brands (Paul Newman and Linda McCartney). In registering famous names and images as trade marks the Registry is now placing much more emphasis on whether the public perception would be that the person has engaged in trading activities under his own name/image or has licensed use of his name/image in relation to trading, endorsement, sponsorship, etc.

    An example of how this is now being applied is the refusal by the Registry to register various images of the late Diana, Princess of Wales for a wide range of products because the marks could not distinguish the goods/services of any one trader from those of others. Many of the products claimed in the application were normal souvenir products and many were products with which the late Princess had no obvious connection during her lifetime. By comparison, the image of the late Linda McCartney was accepted for registration for certain food products because her image was able to distinguish the applicant’s goods from those of other traders.

    The advice to personalities must remain that set out in the Autumn 1999 edition of Make Your Mark with the emphasis being on securing their trade mark position before they become famous.