A trade mark spat between two of England's best known footballers has been reported. The argument involved a UK trade mark application filed by the West Ham prodigy Joe Cole for the mark King Cole in a wide variety of classes. This application was opposed by the former Newcastle and Manchester United forward Andrew (don't call me Andy) Cole. The opponent's case was based primarily on references to Andy (sorry Andrew) Cole in the headlines of national newspapers as King Cole and Net King Cole. It also appears that in 1994 Andrew (or as he was then known Andy) Cole appeared on a charity Christmas card dressed as Santa Claus in the colours of Newcastle United, with the name Net King Cole on the front in red. Nearly 13,000 of these cards were sold which says something about the Magpies supporters, although it is probably best not to speculate what. The opponent claimed that, as a result of this use of the terms King Cole and Net King Cole, he was the rightful owner of the term King Cole.

    The Hearing Officer did not agree. In his view, Mr A. Cole had never traded under the term King Cole (or Net King Cole) and therefore did not possess any goodwill in these names. He may have had some reputation in being called King Cole, but this was not trading goodwill. A nickname created by others could, in principle, become a property right if it was used in trade. But this was not the case here. The opponent had never laid commercial claim to the sign and therefore it was open to the applicant to adopt it as a mark of trade. If Joe Cole had been aware of Cole A.'s nickname, such a filing might be regarded as discourteous. However, it was not dishonest nor was it less than that expected in normal commercial dealings.

    In a recent UK case (Dixon International Group v Stormguard Sills), an application to register the shape of a draught excluder (UK2033242) was opposed principally on the basis that the sign consisted exclusively of the shape of the goods which is necessary to obtain a technical result (Section 3(2)(b) of the 1994 Trade Marks Act). The application had proceeded to publication on the basis of evidence of significant sales of the excluder claimed over a period of at least ten years.

    During the opposition, the applicant also produced a number of testimonies from trade experts attesting to the fact that the shape of the draught excluder claimed was not necessary to perform its function. Other shapes could do the same job.

    The Hearing Officer was not persuaded by this evidence and refused the application under Section 3(2)(b). He found that this shape mark was closely analogous to the three headed razor considered by the English Court of Appeal in Philips Electronics v Remington Consumer Products (1999 RPC 809). In the Philips decision, the Court had ruled that "…the restriction upon the registration imposed by the words 'which is necessary to obtain a technical result' is not overcome by establishing that there are other shapes which can obtain the same technical results. All that has to be shown is that the essential features of the shape are attributable only to the technical result". This ruling had recently been confirmed by an opinion of the Advocate General in the European Court of Justice. Since the essential features of the shape of the draught excluder claimed were found to be designed to achieve (and indeed did achieve) a technical result, the opposition brought under Section 3(2)(b) succeeded.

    The Hearing Officer also rejected the mark as non-distinctive (Section 3(1)(b)). There was no evidence that the applicant had educated the relevant purchasing public that the shape of its draught excluder was a trade mark. The evidence of the trade experts in the analysis of distinctiveness was of little value in this case, given that the product was purchased primarily by ordinary DIY consumers.

    By contrast, an opposition brought by Nestlé against Unilever's UK trade mark application for the shape of their Vienetta ice cream dessert was dismissed. The opponent had argued that the sign claimed was the same shape as a Mille Feuille pastry, in which the pastry had been substituted with ice cream, cream and chocolate. It followed, in the opponent's view, that the shape claimed was incapable of distinguishing Unilever's product from those of other traders (Section 3(1)(a) of the 1994 Trade Marks Act). The Hearing Officer disagreed. In his view, the generic shape of a product must designate the kind of product at issue. It could not be correct to deny registration of a shape for goods for which it was distinctive on the basis that the same shape was not distinctive for different, albeit similar, goods. Unilever's shape would be recognised as different to other ice cream dessert products on the market and it was therefore capable of distinguishing. On the copious use and survey evidence filed by the applicant, the Hearing Officer also found the shape claimed to have acquired a distinctive character.

    Finally, an objection based on the argument that the sign consisted exclusively of the shape which resulted from the nature of the goods themselves (Section 3(2)(a)), was also rejected. On the basis that a three headed shaver did not fall foul of this provision for electric shavers (Philips v Remington), the Hearing Officer found that Unilever's shape could not be said to be the natural shape of ice cream desserts.

    It is reported that UK trade mark applications for Funderbra and Funderpants covering, respectively, bras and knickers, have been successfully opposed by the owners of the earlier marks Wonderbra and Wunderpants. The male Hearing Officer was particularly persuaded by the likelihood of aural confusion involving "an embarrassed spouse", bearing in mind the ECJ's view in Lloyd Schuhfabrik that "mere aural similarity between trade marks may create a likelihood of confusion".

    Whether the opponent would be so successful against applications for marks such as Thunderbra and Thunderpants or Hereunderbra and Hereunderpants, the latter being an exclusive range of lingerie for lawyers, remains to be seen.

    Under the UK Trade Marks Act 1994, use of a registered trade mark includes use of the mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered (Section 46(2)). In a recently reported revocation action before the UK Trade Mark Office, the use of the trade mark 2nd Skin in relation to medical and surgical dressings was viewed as adequate to sustain a registration for the mark Second Skin. The Hearing Officer said that the way in which the public would view the two marks was relevant when considering the question. When seeing the two trade marks, they immediately brought the same meaning to mind. One mark was said to be a recognisable alternative to the other and could be used in place of the other without any loss of meaning. A claim that oral use of a registered mark by the consuming public (rather than by the trade mark owner), would constitute genuine use of the mark was, however, rejected.

    Two more moving trade marks have been accepted by the UK Office. The first is for a chocolate orange breaking apart into its individual segments (UK2280003). The second is for an internet icon featuring the stylised word Liivematch (UK2250462). We have also noted the acceptance of an International (UK) application for ….'s best friend, which presumably is an attempt (no doubt forlorn) to cover the use of Girl's best friend, Dog's best friend, Modern Business Executive's best friend etc. in a single application. In addition, OHIM has recently accepted the shape of a breakfast cereal (CTM610089), a cake or bun (CTM2163277) and a chocolate (CTM784389). In each case, it is the shape of the consumable product itself that has been protected. Finally, a little further afield, Unilever has obtained a New Zealand trade mark registration for an unusual sound trade mark, namely "a squeak produced by the friction of thumb or forefinger on dishware" (NZ247094).

    The UK press has reported that Osama Bin Laden's brother intends to bring out a Bin Laden brand of clothing and that he has sought to protect his name as a trade mark in the EU. However, the only trade mark right for the now notorious name that we could find was a CTM application for Binladen (one word) which was filed by a Swiss company (Falcon Sporting Goods) on 19th September 2001, but which was abandoned just a month later, presumably in the interests of good taste.

    We have noted an accepted UK trade mark application for Victoria Beckham (aka Posh Spice). This application proceeded with the consent of her sainted husband David Beckham, the Manchester United and England footballer, who owns a series of CTM rights for his full name, his surname and a combination of Beckham and the number 7. Filing these cases in his own name shows considerably foresight either by the England captain or his advisers. It means, of course, that when he is inevitably transferred in the future, he will retain the rights to the merchandising of his name (and number). By contrast, a recently published UK application for a combination of Owen and the number 10 is owned by the brilliant young forward's present club Liverpool. All may not be lost for the hero of Munich however, since an earlier UK trade mark registration for Michael Owen is owned by the man himself rather than his club.

    How long will it be before a major football transfer falters not on the size of the transfer fee, the precise number of millions to be paid in annual salary or the preference of the player's wife for Milan or Madrid rather than Manchester, but on the ownership of the intellectual property rights?

    The great English poet and playwright William Shakespeare has long been closely associated with the city of Stratford-upon-Avon, having been born there in 1564. Over three centuries later (in 1879), a theatre dedicated to performing the Bard's plays was built in the city. This construction was destroyed by fire in 1926, but a new theatre was opened at the site in 1932. Some years later, this building became the home of the Royal Shakespeare Company, the RSC having been established in 1960 by the theatre director Peter Hall. Since that time, the RSC has become the leading producer of Shakespeare's plays and has become inextricably linked with the memory of the great man and with English national heritage. It was therefore with some consternation that the English press noted the acceptance of a CTM application for Royal Shakespeare filed by an Austrian company covering food and drink products. Whilst this knee-jerk reaction is to be expected, it is believed that the close association of Shakespeare with both Stratford and Austria is being overlooked. After all, was it not the Bard of Avon who wrote the classic plays The Merchant of Vienna on Ice, The Merry Wives of Innsbruck and Titus and Ron in Graz?

    In a recent UK trade mark case (PAG v Hawk-Woods), an application for summary judgement in respect of an allegation of trade mark infringement under Section 10(1) of the 1994 Trade Marks Act was granted against a defendant who opened up the cases of PAG batteries, replaced their cells and returned the

    batteries (still bearing the PAG trade mark) to the customer. The Court found that such a recelled product was a new battery and therefore was not an article manufactured by the trade mark proprietor. It therefore infringed the plaintiff's UK trade mark registration (PAG for batteries) under Section 10(1). The Judge ruled that Section 10(6) of the Act did not apply to the defendant's activities, since a battery containing substantially new cells could not be identified as goods of the proprietor. Further, Section 11(2) of the Act also failed to offer Hawk-Woods any defence. The use of the manufacturer's PAG trade mark was not necessary because the recelled batteries were not made by the plaintiff.

    An application to register the term Arbroath Smokie as an EU geographical indication has been made by the Arbroath Fish Merchants' Association and Angus Council. If the application is accepted, it will become necessary to produce the deep-brown, oak smoked haddock dish to a specific recipe within five miles of the Scottish town of Arbroath, in order to use the term. It will also be the first British fish dish to be granted such EU protection. However, given that Arbroath Smokies are at present mass produced throughout Britain, the application may face stiff opposition .

    The UK doesn't win the Eurovision Song Contest very often. It usually comes second to Ireland. One of its few successes was in the 1980s when Bucks Fizz sang Making Your Mind Up to the sound of ripping Velcro as the male members of the group (Bobby G and Mike Nolan) removed the skirts of their female colleagues (Jay Aston and Cheryl Baker) during the dance routine to their entry.

    For a number of years after their success in the Song Contest, Bucks Fizz continued to produce hit records. In the nature of these things, however, success became harder to find and the membership of the group slowly changed until, in 1995, when Mike Nolan left, the only original remaining was Bobby G (real name Robert Gubby). Mike Nolan was replaced by David Van Day who had formerly been a member of another successful 1980s pop group, Dollar.

    After 15 months, relations between Bobby G and Van Day had deteriorated and the latter left on bad terms. He (Van Day) then teamed up with Mike Nolan and they began touring as Bucks Fizz Dollar, subsequently changed to Bucks Fizz Starring Mike Nolan and Co-Starring David Van Day. Gubby sued both men seeking an interlocutory injunction preventing their use of the name Bucks Fizz. Nolan subsequently settled with Gubby and agreed not to perform under the name. Van Day, however, continued to fight the action and to use the name and won an initial victory, when the English Court refused to grant the injunction requested. The Judge pointedly commented that the name did not seem to "have much fizz left in it".

    For the time being therefore, there are two groups called Bucks Fizz performing at such international venues as Butlins in Skegness. The full court case, when it comes to be heard, will involve an important point of trade mark law, namely who should own a trade mark after an enterprise (or partnership) splits up.

    As a postscript, it should be noted that a UK trade mark registration for Bucks Fizz covering inter alia live entertainment services is owned by Heidi Manton a member of Bobby G's version of the group. It is to be hoped that the above situation is not complicated further by Ms Manton deciding to leave and launch a third version of Bucks Fizz.

    In a recent appeal (in re Colgate Palmolive Applications), the Appointed Person (Prof. Annand) has rejected four UK trade mark applications (UK2187801A, D, F and G) for representations of slugs of toothpaste. UK2187801 A and F covered slugs longitudinally divided into two stripes, one white, the other coloured. In each case the white stripe contained coloured speckles. UK2187801 D and G covered slugs having a sandwich (three stripe) appearance. The central stripe was white, the two outer stripes were coloured with speckles.

    The Appointed Person agreed that such marks were capable of being trade marks. However, because she was not satisfied that

    • The applicant's toothpaste get-ups were sufficiently different from the get-ups of other toothpastes on the market, and
    • The get-ups applied for were likely to be regarded by the average consumer as indicating the origin of the applicant's toothpaste,

    she rejected the applications under Section 3(1)(b) of the 1994 Act on the basis of non-distinctiveness.

    It should be noted that two very similar marks owned by the same applicant (UK2187801B and 2187801C) have apparently been accepted by the UK Office.

    The launch of the new top level domain .biz has suffered a setback, because it has been declared by a Court in California to be an illegal lottery. It may be recalled from an article in the last edition of Make Your Mark that the process of awarding .biz registrations was to involve random selection in the event of there being two or more applicants for a particular name. This process has now had to be reviewed and an announcement is expected soon from Neulevel as to their proposed new procedures. The new procedures will not affect the .biz registrations that have already been granted where there was only a single applicant.