UK NEWS

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It is reported that the ageing rock star Mick Jagger (the artist formerly known as Mr Jerry Hall) has registered his name as a trade mark. The CTM registration covers a wide range of goods and services, including cosmetics, sound recordings, clothing and internet information services. A spokesman for the singer was quoted as saying that "he did not sit at home and think how can I market a new lip gloss? The registration was simply designed to prevent others from using the name for unofficial merchandise and websites". Given the intention to use provisions in the UK Trade Marks Act and their absence from the CTM Regulation, it is perhaps just as well that the 56 year old singer chose to file at OHIM. Otherwise, it might have been a case of I Can’t Get No Registration.

Whilst on the subject of well known characters, past and present, protecting their names by trade mark registration, we have noticed the following published in the UK and CTM journals in the past few months, Lennox Lewis, the world heavyweight boxing champion, Mark Todd, the peerless New Zealand horse rider, Jaap Stam, the Dutch footballer whose Euro 2000 penalty is probably still going up, Capt. Scott, the leader of the ill fated Antarctic expedition, Picasso, painter of the masterpiece Guernica and J.K. Rowling, the author of the phenomenally successful Harry Potter books. In addition, a Mr Martin of Sidcup in Kent has applied to register Smokey Beckham for potato crisps. No doubt he intends to try to licence this to Walkers, the UK crisp manufacturer, as an extension to their Salt and Lineker and Cheese and Owen range. What David Beckham’s, the England footballer’s, reaction to Mr Martin’s application will be, remains to be seen.

Of course, filing a trade mark application for a personality’s name without the permission of that personality should, at least in principle, lead to the rejection of the application. It is not entirely clear how consistently the UK and CTM authorities apply this principle. However, OHIM’s refusal of applications for Fidel Castro, Bill Clinton and Johannes Paul II, all of the applications having been made by unrelated third parties and all covering inter alia cigars, offers the great and famous some hope.

The rush to enter the trade mark arena crosses all social barriers. Even Her Majesty the Queen is not immune to the process. Although she herself has not been sullied by this brush with commerce, a company representing her interests, Flitcham Ltd, has registered the names of her two private homes, Sandringham and Balmoral Castle, for a variety of no doubt extremely tasteful merchandise. Buckingham Palace has denied that this move into brand merchandising is in any way linked to the freezing of the Civil List funding by the Blair government.

In the Autumn 99 edition of Make Your Mark, we reported that the BBC were objecting to the registration and use of the term Cathcart Proms to describe a series of concerts held at London’s Royal Albert Hall. The BBC, who themselves have run a series of Promenade Concerts (or Proms) at the same venue for many years, had opposed a UK trade mark application, made by the founder of the Cathcart Proms (Mr Palmer-Jeffrey), to protect the offending phrase for music related services.

The Hearing Officer found in favour of Mr Palmer-Jeffrey and allowed the application to proceed. The evidence strongly suggested that the word Proms was descriptive of a particular type of musical concert. It was possible that the BBC could claim a monopoly in the term The Proms, although the evidence put forward on this was not conclusive. However, they had established no exclusive rights in the word Proms alone. Even if the BBC could claim rights in The Proms, there was no evidence that the applicant’s use of Cathcart Proms would amount to a misrepresentation.

On 28 March, the sale of patents, registered and unregistered trade marks, registered and unregistered designs, copyright and plant breeders rights became exempt for the purposes of UK Stamp Duty. Unfortunately, for UK trade mark owners and practitioners, one intangible asset, namely goodwill, remains subject to the payment of Stamp Duty. It follows that, in future transactions involving the transfer of UK trade mark registrations and associated goodwill, some thought should be given to the structure of the consideration payable in order to try to minimise any tax payable on the document. For further advice on this difficult area, contact the Jenkins trade mark department.

A UK trade mark application (no. 2031496) to register a hologram in relation to financial services in Class 36 has been rejected by the UK Trade Mark Office. The mark applied for, which consisted of the hologram itself, was said to be inadequately represented graphically. The Hearing Officer did not rule out the registration of holograms entirely, however. He suggested that, given the present technological limitations associated with the recordal of marks on the Office’s computer database and with the publication of marks for opposition purposes, it would be better to represent a hologram by offering various pictorial views showing the essential features of the hologram as it is observed from different angles.

Under EU Regulation 2081/92, it is possible to protect designations of origin and geographical indications for use exclusively on products, the characteristics of which are due to or attributable to their production in the protected area. On this basis, Scottish beef, Blue Stilton cheese and Newcastle Brown ale are protected terms.

The good people of Cornwall, England’s most south-western region, have already taken advantage of these provisions to protect Cornish clotted cream from imitation by those situated outside their county. They have now moved onto the other gastronomic delicacy for which they are rightly famous, the Cornish pasty. They have decided that, for too long, sad imitations of Cornwall’s staple food have been sold by bakers throughout the UK. They have no objections to these inferior products being called pasties, they simply want to prevent the widespread use of the term Cornish pasty .

It is likely that the case for the Cornish pasty will prove more difficult to sustain than that for Cornish clotted cream. This is because the pasty’s ingredients do not always come from within Cornwall and there is no definitive recipe or shape. However, with over 3 million genuine Cornish pasties being produced a week and an annual turnover of £150 million, those representing this most independent part of England will fight vigorously to protect what was probably the first convenience food.

On January 1st this year, the UK law governing weights and measures changed. From that date supermarkets and smaller shopkeepers were obliged to display their products in metric units, grams and kilograms rather than the more traditional ounces and pounds. Even museums designed to recreate English life during the early part of the 20th century are being forced to comply with these regulations, although requiring visitors to purchase 56 grams of mint humbugs (rather than 2 ounces) appears, to this observer at least, to be taking things a little too far.

The big trade mark question raised by these changes, of course, is whether McDonald’s will have to start selling a 112 Grammer beefburger instead of the traditional Quarter Pounder. We wait for a decision on this weighty matter with keen anticipation. Incidentally, those with a passing interest in trade marks might wish to note that a CTM application for Quarter Pounder in the name of McDonald’s was abandoned in May 1999.