For those of us whose youth began at about the time President John F. Kennedy was assassinated in 1963, the image of his young son saluting the funeral cortege will remain an abiding memory. The death of that son, John F. Kennedy Jr., at the age of 39 in a plane crash in July 1999 was therefore a reminder not only of the tragic history of the Kennedy family, but also of our own, now distant youth.
For most, the death of Mr Kennedy along with his wife, Carolyn Bessette Kennedy, and her sister, Lauren Bessette, simply represented a sad story of three lives, unnecessarily cut short. For Mr Martin Shäffer, however, the deaths represented an opportunity. On 19 July 1999, three days after the accident and even before the bodies had been found, he filed two German trade mark applications for the marks John F. Kennedy Jr. and Carolyn Kennedy-Bessette. Six months later, he followed these national applications up with two CTM applications for the same marks. The CTM application for Ms Kennedy-Bessette’s name covers goods in Classes 3, 25 and 33. Mr Schäffer clearly believes, however, that the exploitation of Mr Kennedy’s name offers greater opportunities, since the CTM application for his name covers goods in Classes 14, 18 and 20, in addition to those protected in the other application. These two CTM applications have now been accepted by OHIM and were published for opposition in November 2000. Unless they are opposed on the basis of third party prior rights, they will probably proceed to grant later this year. Whether the Kennedy family (or anyone else) will then apply to cancel the registrations on the ground of bad faith, the legislators having omitted to include the ground of bad taste in the reasons for cancellation, remains to be be seen.
The trade mark protection of the names of well known personalities, living or dead, continues apace. Amongst the marks that have recently been accepted by the UK and CTM Offices, we have noted the names of
Musicians ranging from the sublime, B.B. King and Mozart, to the not-so-sublime, Barry Manilow and Ringo Starr.
Entertainers of international renown, Ingrid Bergman, Kevin Spacey and Will Smith, and of more local celebrity, such as Charlie Dimmock and Lily Savage.
Sportsmen as diverse as the Welsh rugby union star, Scott Gibbs, and the English rugby union star, Lawrence Dallaglio.
The author Tolkien, writer of one of the most successful and only partly read books (Lord of the Rings) ever published.
The scientist Einstein, accepted for "furniture". Presumably the trade mark owner uses the slogans "We deliver at the speed of light" and "Our furniture is relatively good, at least in theory".
The ill-fated Diana, Princess of Wales, filed, perhaps not surprisingly, by the Executors of her Estate, for "flowers". The controversial businessman, Mohamed Al Fayed, accepted for a wide range of goods including "stationery". It is assumed that this will encompass "brown paper envelopes".
Perhaps the most interesting trade mark application to be published in the UK Trade Marks Journal in the past few months is application no. 2235348 owned by British Telecom which claims, in combined pictures and words, the moving image of a revolving globe. The application consists of 286 images representing the globe as it revolves. These images are amplified by the following written description,
"The trade mark is an animated sequence consisting of a rotating globe device, in which the continents are depicted in the colours red, pink, purple, blue, green, yellow and orange, which is produced by sequentially displaying the attached images in the order given, starting from the top left corner moving across the row to the far right, returning to the second left row and moving across again to the far right, continuing in this order from left to right, ending with the bottom right corner, whereupon the sequence will recommence."
Although this is not the first UK application that has been accepted for a "moving" trade mark, see, for example, UK2012603, it does appear to be the first for an animated internet icon. Given the likely growth in importance of the virtual commercial world over the next few years and the corresponding likely growth in the use of moving images as trade marks, the acceptance of UK2235348 represents a major step forward in the battle to protect such "virtual" trade marks. The manner in which the mark was represented in UK2235348 may also give a pointer to those wishing to register holograms as trade marks.
In 1999, the euro was introduced as a unit of currency in the majority of EU countries. The symbol chosen by the European Commission for the euro was a Greek letter epsilon containing an additional line. According to the Commission’s website, the euro symbol refers to the cradle of European civilisation (Greece) and to the first letter of the word Europe. The two parallel lines are said to represent the stability of the currency although, until the last few months, stability was not a word that was closely associated with the euro.
Ten years before the introduction of the euro, Barclays Bank filed two UK trade mark applications for a device bearing a remarkable similarity to the euro symbol for use in relation to its Interpayment travellers cheques and financial services. These applications proceeded to registration in 1993. The registrations were acquired by the travel agent Thomas Cook when they acquired Interpayment in 1995. It appears that, once the Commission’s choice of symbol had become known, Thomas Cook contacted them to draw the existence of their trade mark rights to their (the Commission’s) attention and to discuss their relevance to the Commission’s plans. These contacts apparently ceased during the middle of 1999. It is now reported that Thomas Cook has initiated proceedings against the Commission before the ECJ claiming trade mark infringement. In the proceedings, Thomas Cook are said to be claiming damages of £25.5 million.
Trade marks can mean different things to different people in different places. In the early 1920’s, Life magazine began running a cartoon strip featuring a young boy called Skippy. The cartoon, which was created by Percy Crosby, lampooned politicians, crusaded against corporate crime and ran until 1945. In 1933, Rosefield Packing began selling Skippy peanut butter in the US. The product’s label originally featured certain images that alluded to those associated with the cartoon strip. Permission to do this was not obtained from Mr Crosby. Since its launch, Skippy peanut butter has become one of the best-known brands in the US. It is now sold by the food giant, Bestfoods. The original circumstances under which the Skippy product was introduced to the market led Mr Crosby to pursue a campaign against both the brand and the companies associated with the brand for much of the rest of his life. This campaign was continued, after Mr Crosby’s death, by his daughter. The latest stage in the campaign was a claim, posted at the daughter’s website, that the Skippy trade mark had originally been "pirated" and continued to make a fortune for Bestfoods in "illicit" sales. Not surprisingly, Bestfoods took exception to these claims and sought a court order seeking their removal from the website. It is reported, however, that Bestfoods request was denied. Mr Crosby’s daughter has pledged to continue her fight to prove that Skippy "belongs to her father and not to Bestfoods".
In the US, Skippy therefore means either a cartoon character or a peanut butter, depending on your point of view (and probably your age). In the UK, however, what does the word Skippy bring to mind? Do I hear anyone say a Bush Kangaroo? Even though the mark is also registered in this country by Bestfoods for peanut butter, the writer suggests that, to the majority of the UK population, the name Skippy is almost exclusively associated with an Australian TV series featuring a kangaroo, her human pals and a catchy theme tune composed by one Eric Jupp. The world may have become a global village but, thank goodness, there remain many local differences.
It is reported that a UK trade mark application for Diana, Princess of Wales claiming a wide range of goods and services in 19 classes has been refused on the basis that it is incapable of indicating that the goods/services originate from a single undertaking (Section 3(1)(a)) and that it is non-distinctive (Section 3(1)(b)) after a UK Trade Mark Office hearing held in July 2000. The Hearing Officer relied on the reasoning in the earlier Elvis Presley case (see Make Your Mark, Autumn 99) that there is no general right to character exploitation enjoyed exclusively by the celebrity in the UK and that therefore there should be no a priori assumption that only a celebrity or his/her successors may ever market (or licence) his or her own character. The objection was maintained in the face of evidence that numerous companies had sought licences to employ the mark applied for after the Princess’ death and public survey evidence showing that a significant proportion of the UK public would expect a product bearing the mark to be associated in some way with the Memorial Fund set up after Diana’s death. The obvious solution to this problem was for the Executors of the late Princess’ estate to file CTM applications for the mark. This they have done and four such applications for the mark have been accepted. It is, of course, one thing to obtain CTM protection for the mark, it is another thing entirely to try to enforce such a registration in the UK.
Two recent UK Trade Mark Office cases have shown that even small differences may sometimes serve to distinguish between two trade marks, particularly if the marks are names or well known English words. In the first case, an application for McBain covering "spirits" was allowed to proceed in the face of an earlier registration for McCain covering, amongst other goods, "beers". The Hearing Officer found that the goods were similar but decided that, since the public were adept at distinguishing between surnames, a McBain spirit product was not likely to be confused with a McCain beer. In the second case, an application to register Virgil (slightly stylised) for goods in Classes 3 and 8 was opposed by Richard Branson’s Virgin Enterprises on the basis of their earlier trade mark rights in Virgin. The opposition was rejected primarily because the Hearing Officer felt that it was possible to distinguish between the two marks in a conceptual sense. The average consumer would know the meaning of the word "virgin" and would also know that Virgil was a name, which, depending on their background, they would associate with a Roman poet or a puppet character from the TV series Thunderbirds. This reasoning reminds the author of his youth when, depending on your upbringing, you thought a certain piece of music was either Rossini’s William Tell Overture or the theme from The Lone Ranger.
Under a Spanish Decree in 1988, Rioja wine for export from Spain had to be produced and bottled in authorised cellars in the (Rioja) region of production. The Belgian Government challenged this Decree before the ECJ claiming that it was contrary to the principle of free movement of goods in the EU since it restricted the bulk export of unbottled Rioja wine. The ECJ ruled in favour of the Spanish authorities. The Court found that, if the bottling process were not carried out under strict conditions, the quality of the bottled wine might be impaired. Further, the quality could also be adversely affected if the unbottled wine were transported over long distances. The ECJ were at pains to point out that their ruling did not prevent the export of unbottled wine produced in the Rioja region.
It merely prevented such wine eventually being called Rioja.