• COURT DIARY

    Loaded Dice

    In April 1994, IPC Magazines launched a new magazine called Loaded aimed primarily at young men between the ages of 20 and 35. The magazine was dominated by features on fashion, celebrities, travel, lifestyle and sport. It also included numerous advertisements for clothing. IPC’s publication was immediately successful and, by August 1995, had become the best selling men’s magazine in the UK. Promotion of the magazine, from April 1994 onwards, was widespread and included the distribution of T-shirts and jackets bearing the mark Loaded. The mark Loaded was protected by a UK registration covering "printed publications".

    Two years after the launch of Loaded magazine (in March 1996), Valucci Designs, a company having no commercial relationship with IPC, filed a UK trade mark application for Loaded covering "clothing". IPC opposed the application, primarily on the basis of Section 5(3) of the 1994 Trade Marks Act (the dilution section). The Hearing Officer found in favour of Valucci and IPC appealed to the Appointed Person (Mr Thorley). Again, the principal ground for objection was Section 5(3). Under that Section, it is necessary for the opponent to show that

    • The later trade mark is identical with or similar to the earlier registered trade mark.

    • The later goods or services are not similar to the earlier registered goods or services.

    • At the date of filing the later application, the earlier trade mark has a reputation in the UK.

    • The use of the later trade mark is without due cause.

    • The use of the later trade mark takes unfair advantage of, and/or is detrimental to the distinctive character or the repute of the earlier mark.

    On the basis of the evidence presented to him, Mr Thorley found that, at the date of Valucci’s trade mark application, the trade mark Loaded had a significant reputation in relation to magazines amongst at least a proportion of the UK public. He also found that the magazine was known for its fashion content and (fashion) clothing advertisements and that the manufacturers of fashion goods were keen to advertise in the magazine. In short, by March 1996, there was a well established association between the magazine and clothing. On this basis, he thought that it was inevitable that a substantial number of those familiar with the magazine would call it to mind if they saw a range of Loaded clothing. In the light of this and for the following reasons, Mr Thorley allowed the Appeal and refused Valucci’s application. According to Mr Thorley

    • In the present case, when considering Section 5(3), the only questions that needed to be decided related to the issues of (a) reputation and (b) unfair advantage and/or detriment. Having found that the opponent had the necessary reputation, that left only the latter issue (b) to be addressed.

    • It was not necessary to prove confusion in order to succeed under Section 5(3). It was enough to show that the public makes a connection between the earlier and the later mark and that the connection is prejudicial to the earlier mark.

    • The onus of proving both reputation and unfair advantage/detriment lies upon the opponent (IPC). Weight can only be attached to an expert’s opinion when it is an opinion which is based upon his experience and is explained in sufficient detail so that the Court can comprehend the reason why the expert holds that opinion and can assess by reference to the explanation the weight that is to be attached to it.

    • Detriment could be by reason of dilution, blurring, tarnishing or inhibition (emphasis added). It is a common practice nowadays for companies to use clothing as a promotional vehicle. Loaded magazine had in fact done this prior to March 1996. If Valucci’s application were granted, they could oppose any further marketing of that clothing on the ground of trade mark infringement. This would be an unfair fetter on IPC and would cause them detriment. Further, registration of Valucci’s mark might also affect advertisers’ perception of Loaded magazine and their willingness to advertise in the publication. Finally, given that Loaded is not a natural term to use as a trade mark for either a magazine or clothing and given the reputation established by IPC in relation to a magazine having a significant fashion content, it was inevitable that some of the kudos of Loaded magazine would accrue to Loaded branded clothing.

     

    Comment

    This is a significant case that may, in some circumstances, broaden the definition of detriment for the purposes of Section 5(3) of the 1994 Act. On the basis of this precedent, if a trade mark owner can establish the necessary reputation in their mark, a link of some sort between their goods or services and the goods or services applied for and, preferably, evidence of merchandising activities that predate the later mark’s filing date, then an argument based on the inhibition of future merchandising activities might succeed. The chances of succeeding under this heading, however, will depend entirely on the nature of the evidence, expert or otherwise, that the earlier right owner can bring to bear.

    Indeed, the only way in which the above decision can be reconciled with an earlier Appointed Person (Mr. Hobbs) decision involving the trade mark Corgi (see Make Your Mark Spring 99) is that, from the evidence in the Loaded case, Mr. Thorley must have seen a much stronger trade mark link between Loaded magazine and Loaded clothing than Mr. Hobbs saw between Corgi model cars and Corgi clothing.

    Of course, the simpler, alternative course for all trade mark owners in the media/entertainment industry is to protect their trade marks in Class 25 and other merchandising classes from the outset. Although this will clearly add to the initial cost of protecting the mark, it will almost certainly reduce the overall cost in the medium to long term.