IN THE UK OFFICE

Linkin Park Locked Out

Registrability of Celebrity Names as Trade Marks

Celebrities around the world are discovering paradoxically that, when it comes to the U.K. Trade Marks Registry, the less well-known they are, the better. So found acclaimed hip-hop band Linkin Park in August, when its U.K. trade mark application for LINKIN PARK was rejected on the grounds that it was non-distinctive and descriptive in respect of goods capable of bearing images of, or concerning, the band.

Linkin Park, whose ascent to fame began in 2001 with the launch of their award-winning album Hybrid Theory, applied in October 2002 to register their name as a trade mark in the U.K. in respect of a wide range of merchandise, including “printed matter, posters and poster books” in Class 16. The examiner recognised the band’s name and, following a practice amendment issued last year, objected that the mark was descriptive and not distinctive in respect of goods capable of bearing images of, or which could concern, the band.

The practice amendment in question was one of the many ripples spreading from the ECJ’s decision 2 years ago in Arsenal v Reed. In that case, the ECJ held that any use of a mark which is capable of affecting the essential function of a registered mark, which is to denote trade origin, may infringe. The decision was widely seen as opening up new avenues down which celebrity trade mark owners might pursue non-official merchandisers, whose activities would previously have been seen as unactionable use of celebrity, team or band names as mere “badges of allegiance.”

The English courts and Patent Office alike recoiled from what was commonly perceived as over-reaching by the ECJ and an uncomfortable broadening of infringement rights beyond previously known parameters. In practice, the courts have sought to dress the concept of “use capable of affecting essential function” as use that denotes trade origin, leaving the door wide open for unofficial merchandisers to argue that their use of celebrity names purely decoratively on merchandise, or to denote subject matter, does not infringe. This developing approach is exemplified by the recent High Court judgment of Geoffrey Hobbs QC in Electrocoin Automatics Ltd. v. Coinworld Ltd. and Others [2004] EWHC 1498 (Ch), which addressed the issue of infringing use, although not, in that case, in the context of celebrity merchandise.

The Patent Office, for its part, commenced a rearguard action against the widening of infringement rights by seeking to limit the registration of famous names as trade marks. Practice Amendment Notice 5/04 introduced the new regime as one in which the names of celebrities or famous teams or bands would be rejected as descriptive or non-distinctive in respect of “mere image carriers” such as posters, photographs, transfers and figurines. The living fared worse than the dead; although it was recognised that the names of deceased celebrities or defunct teams or bands might be seen as mere historical references to subject matter, nonetheless with the passage of time they might be more likely to be perceived as indicators of trade origin, even where descriptive or decorative.

Following this new practice, in LINKIN PARK the examiner reasoned that the mark was so well-known as the name of a famous band that it was likely to be perceived immediately as a descriptor of subject matter in respect of posters and books. In his view, use of LINKIN PARK in respect of such goods was essential, as they could not otherwise be described as posters of, or books about, the band. Therefore, he regarded LINKIN PARK as capable of serving in trade to designate a quality of the goods under S. 3 (1) (c) of the Trade Marks Act 1994. Moreover, as the band was so well-known, the examiner considered that most consumers buying posters or books bearing the words LINKIN PARK would not perceive them as a trade mark, but rather as an indicator that the goods related to the band in some way. Therefore, the mark was also devoid of any distinctive character under S. 3 (1) (b).

 

 

Comment

 

This decision is an unfortunate application of a regrettably misguided rule.

The practice adopted in PAN 5/04 is of deeply questionable propriety. The PAN concerns examination under S. 3 (1) (b) and (c), which are concerned with the inherent capacity of a mark to distinguish or to designate characteristics of the goods. This requires a consideration of the mark itself in the context of the goods claimed, without reference to external factors such as use. The clear words of S. 3 (1) show that the effects of use are relevant, but only where the use demonstrates that a mark has become customary in the trade for the goods or services claimed, or where the use has conferred distinctive character on an inherently non-distinctive mark. The PAN, in contrast, sees use as something which can deprive an inherently distinctive mark, which is not customary in the trade, of distinctive character. This runs against the grain of the statute and Parliament’s intention.

There is nothing inherent in the words LINKIN PARK to suggest that the mark cannot distinguish Class 16 goods, nor that the mark is inherently descriptive of any characteristic of them. The fact that use has resulted in widespread fame and a following which generates posters, books and memorabilia is irrelevant to inherent examination. Unofficial merchandisers who use LINKIN PARK in descriptive or decorative ways may find refuge from infringement through the statutory defence which permits honest use of descriptors (S. 11(2) (b)), or the more fundamental argument that such use does not denote trade origin. That is not the same, however, as saying that the words LINKIN PARK are not capable of denoting trade origin.

It is easy to understand the Patent Office’s concern that, following Arsenal, something had to be done to stop brand owners from cutting down honest and legitimate trade in non-official celebrity merchandise. The Arsenal guidance seemed capable of allowing, and indeed even impelling, the courts to abandon all common sense in assessing the nature of infringing use. In fact, however, the courts have shown themselves more than capable of interpreting the guidance in a way that preserves legitimate traders and avoids the dangerously broad effects that many feared. The Patent Office’s intervention, which turned a blind eye to the clear words of the statute, was neither needed nor appropriate, and in the case of LINKIN PARK appears to have led to error.

Regrettably, just as MYM went to press, the band’s appeal was rejected. It seems unlikely that this contentious issue has been laid entirely to rest, however, and further developments in this area are likely.