• IN THE UK OFFICE

    Appeal Fails in LINKIN PARK

    In the last issue of Make Your Mark, we reported the decision of the Patent Office rejecting a trade mark application for LINKIN PARK in respect of “printed matter, posters and poster books” in Class 16.

    We considered the Patent Office’s decision to be a misjudgment, involving the improper intrusion of use into what should have been an assessment of the intrinsic qualities of the mark. As reported, the Patent Office found that LINKIN PARK was descriptive of image-carrying goods such as posters under Section 3 (1) (c) of the Trade Marks Act 1994. The band of that name had an established following in the U.K. and there was, the hearing officer held, no other reasonable way for traders or fans to describe posters and other image-carrying promotional goods bearing images of the band than as “LINKIN PARK” posters and goods. When we last went to press, the band had appealed.

     

    Appeal Judgment Handed Down

    The appeal has now been dismissed. Richard Arnold, QC, acting as a person appointed by the Lord Chancellor to hear appeals under the Act, found in Decision O-035-05 that the hearing officer had not erred. By the application date, the words LINKIN PARK had acquired a substantial recognition among music fans in the U.K. such that in connection with image-carrying goods such as posters, the mark had become descriptive of an essential characteristic of the goods, namely that they bore an image of the group. It was enough that LINKIN PARK was capable of being used descriptively in that sense for an objection under S. 3 (1) (c) to be made out.

    The Appointed Person saw no paradox in increased fame leading to decreased protectability. In his view, it was perfectly conceivable that a trade mark could become distinctive for one class of goods or services (such as musical performances), and by virtue of the same process become descriptive in respect of another (eg, image-carrying promotional goods). He drew support from inter alia the decision of the High Court in Rugby Football Union v Cotton Traders Ltd. [2002] EWHC 467, [2002] ETMR 76 to invalidate a Community Trade Mark for the English national rugby team’s rose emblem, under inter alia Article 7 (1) (c) of the CTM Regulation, because it had been widely used by undertakings which were uncontrolled by the team and had come to communicate a descriptive message.

    The Appointed Person observed that although a performer may be entitled to sue in passing off if others marketed performances or musical works under his or her name, or a confusingly similar one, it did not necessarily follow that the performer’s name could indicate trade origin in respect of a product that embodied the performance or work, such as a CD (relying on the House of Lords in R. v Johnstone [2003] UKHL 28 [2003] WLR 1736). The Appointed Person extended this reasoning to cover promotional goods such as posters, which embody the image of the band.

     

    Comment

    The outcome of the appeal is a disappointment, although it casts useful light on how arguable the registrability of celebrity names for image-carrying promotional goods is.

    The ECJ’s judgment in OHIM v Zapf Creation AG (NEW BORN BABY), which found that Article 7 (1) (c) was breached by marks which inherently describe what a product represents (eg dolls which look like new-born babies), has prompted the development of the law in the U.K. to prohibit the registration of marks which, through use, have become capable of describing a characteristic of the goods, namely that they bear an image of a particular band or celebrity.

    This growth is superficially attractive, and its public interest aims are clear. However, as a matter of law, it is impure. The principles underlying Article 7 (1) (c) and the U.K. equivalent, S. 3 (1) (c), require an assessment of the intrinsic qualities of the mark. Use is expressly relevant where an applicant seeks to show acquired distinctiveness, or where a mark has become customary in the current language or in the bona fide an established practices of the trade (S. 3 (1) (d) of the Act). Neither issue was raised in LINKIN PARK.

    It is possible that an objection under S. 3 (1) (d) may have been more legally tenable given the Appointed Person’s forceful point that those seeking a poster bearing an image of the band LINKIN PARK would ask for “a LINKIN PARK poster.” However, this issue was neither raised nor explored.

    No appeal is possible from decisions of the Appointed Person, although it is open to the band to re-file and then appeal a refusal directly to the High Court. The Patent Office has withstood a barrage of criticism on its position in this case and would probably welcome the intervention of the court on this extremely thorny issue. Additionally, the ECJ is soon to consider similar issues arising in an ECJ reference in Adam Opel AG v Autec AG (C-48/05) which may shape the Patent Office’s future practice in such cases.

    For now, while the Patent Office is not formally bound by the Appointed Person’s decision in LINKIN PARK, the ruling will be highly persuasive. The Patent Office is likely to follow it until the ECJ or the court guide differently.