UK NEWS

Snippets...

Amongst the sporting personalities who have recently filed CTM and UK trade mark applications for their names, to ensure that they can cash in fully on their fleeting moments of fame, are Lawrence Dallaglio, the former England rugby captain, and Lennox Lewis, the present world heavyweight boxing champion. The writer observes that Dallaglio’s application has been filed by a company called Sixes & Sevens Ltd which, it is suggested, is an apt description of the England rugby team’s style of play over the past few decades. Furthermore, if anyone reading this wishes to oppose Lennox Lewis’s applications, the writer can recommend some very good UK trade mark attorneys (other than Jenkins).

Maintaining the sporting theme, a number of esteemed sporting organisations have also sought to protect what they believe to be their trade mark rights in the past few months. Thus, the International Olympic Committee has filed a CTM application, for a combination of the words Olympic Games and the famous five ringed Olympic device, in all forty two classes. The possibilities for licensing this mark are no doubt virtually limitless, but one wonders whether it was wise to include “pharmaceutical preparations” (for example, anabolic steroids) in the list of goods and services claimed.

An earlier edition of Make Your Mark (Spring 99) noted that the All England Lawn Tennis Club’s attempt to register Wimbledon as a trade mark had caused uproar in the local community. Now Tottenham Hotspur football club are risking a similar adverse reaction with their UK trade mark application for Tottenham (which is the name of a borough in North London) covering goods and services in fifteen classes.

Finally, it is reported that the Queen has endorsed a plan to sell Royal Ascot branded goods following a campaign to protect the name of the famous race meeting. For those unacquainted with the event, each summer, at the height of the English “season”, well bred colts and fillies, otherwise known as the English aristocracy, parade before the Queen (hence Royal) at a racecourse (Ascot) in Berkshire, west of London. As well as observing various lords and ladies in their finery, the Queen also has a chance to watch some of the best thoroughbred horses racing, although, to the disinterested observer, the racing appears to be entirely incidental to the main social event.

Be that as it may, the Ascot racecourse authorities have finally decided to try to cash in on their reputation in the name Royal Ascot. They have therefore filed a series of trade mark applications for variations on the Royal Ascot theme covering a wide variety of goods and services, including hampers, oyster openers, caviar, champagne, cigars, top hats and betting services. All you need, in fact, for an average day out at the Royal Ascot races.

One of the most popular computer games in the UK is Tomb Raider. It features the, undoubtedly female, heroine Lara Croft. Both the marks Tomb Raider and Lara Croft, as well as images of the gun toting main character are the subject of CTM and UK trade mark registrations owned by Core Design Ltd.

In order to promote the game, a Lara Croft lookalike, who otherwise goes by the name of Nell McAndrew, travelled the world for a year posing as a real life version of the Tomb Raider character. Once this exercise was completed, Ms McAndrew, a full time model whose star sign is Scorpio and favourite meal is Italian, moved on to other assignments. One of these was to appear, as nature intended, on the front cover of Playboy magazine. Prior to publication, however, the proposed cover, which was also to feature the marks Tomb Raider and Lara Croft, was brought to the attention of Core Design. They were not overjoyed to learn that their trade marks were to be used alongside nude pictures of Lara Croft’s human double. They therefore brought an action in the English High Court to prevent publication of the offending cover. The Court ruled that Playboy would have to blank out both of Core Design’s marks. Ms McAndrew, whose hair colour is blonde (at the moment!) and whose eyes are green, was reported to be “astonished” at the fuss that her activities had caused. It is not reported whether the stickers on the Playboy cover were eventually placed over anything other than the marks Lara Croft and Tomb Raider.

The London police force, known as the Metropolitan Police, was founded as long ago as 1829 by Sir Robert Peel. During its long history it has been known for many things, some admirable, others less so. However, until very recently, brand awareness would not have been closely associated with the Met. In modern Britain, however, all things are clearly possible. We can therefore report recent sightings of the following trade marks filed on behalf of the latter day Peelers, New Scotland Yard, Metropolitan Police Vice Squad, Crackdown and Operation Bumblebee. The type of figurines, soft toys and novelty items that will be sold under these marks has yet to be explained.

It is reported that Pfizer, the owner of the well known trade mark Viagra has succeeded in its attempt to prevent the use of Viagrene as the name of an aphrodisiac soft drink in the UK. The drugs company had sued Eurofood-Link, a Finnish based firm, over their plans to introduce the blue coloured Viagrene under the slogan The real drink for importent moments.

Pfizer’s action was allowed under both Sections 10(2) and 10(3) of the Trade Marks Act 1994. In the former case, the Court found that, despite the difference between the two products and their different channels of trade, there was still a likelihood that purchasers of Viagrene would believe that it was associated with Viagra and therefore Pfizer. In the latter case, the Court concluded that Viagra enjoyed the necessary reputation in the UK and that the sale of Viagrene would take unfair advantage of that reputation as well as being detrimental to it. This decision, together with the UK Registry’s refusal of Visa for condoms reported elsewhere in this issue, shows that the UK authorities are slowly coming to terms with the concept of trade mark dilution.

In a decision that may have a considerable impact on the registrability of alpha-numeric phone numbers in the UK, Mr. Jacob has ruled that the trade mark 800-Flowers is not capable of distinguishing the applicant’s (1-800 Flowers Inc’s) flower ordering services. Since, at the date of application, the applicant did not own the actual UK alpha numeric number (which is 0800-Flowers), the Judge also found that the mark applied for was potentially deceptive and that the applicant did not have the necessary intention to use the mark (a requirement under UK law).

The opponent in this case was Phonenames Limited who own the phone number 0800-Flowers in the UK. Their victory in this opposition may turn out to be pyrric however, as they own 375 UK trade mark applications and registrations and 4 CTM applications for alpha-numeric numbers of the type refused by Mr. Jacob, including a CTM application for 800 Flowers.

It has recently been reported that the colour turquoise has been registered in the UK (no. 2029939) by H.J. Heinz in relation to beans. The precise mark claimed is “the colour turquoise, being the most dominant single colour applied to the visible exterior of the packaging of goods”.

Under UK trade mark practice, it is difficult, though clearly not impossible, to register single colours as trade marks. The difficulty lies in showing that the colour of the goods or the packaging of the goods, in the absence of other indicia, such as a word mark, a device mark or other get-up, has come to be associated exclusively with the applicant. In order to prove this, survey evidence, which, in the case of Heinz’s turquoise colour, was public survey evidence will be required, in addition to evidence of substantial sales. As Mr. Jacob said, in the Treat case (1996 RPC 281), “Mere evidence of use of a highly descriptive or laudatory word will not suffice, without more, to prove that it is distinctive of one particular trader...”.

Having said that and despite these obstacles, a number of single colours have now been accepted by the UK authorities, see, for example, UK2103551 for red London bus services, UK2057893A for orange in relation to telephones and telecommunications services, UK2020876A for purple chocolate packaging, UK2042556B for lilac chocolate packaging, UK2058279 for turquoise in relation to cheque book covers and banking services, and UK2046817 for turquoise packaging or labelling of pharmaceutical preparations.