Steve van Dulken's Patent blog

Ambush marketing

An interesting area of trade mark law is "ambush marketing", where, typically, there is an official sponsor of a sports event and another company tries to get publicity out of the event.

Coventry University's Centre for the International Business of Sport has just published its A typology of ambush marketing: the methods and strategies of ambushing in sport, while last year they published Ambush marketing in sport: an assessment of implications and management strategies.

These reports are not as dry as they may sound. About 400 examples have been traced by the researchers, and some are mentioned in the reports. 

These include Bavaria Brewery getting fans to wear orange lederhosen advertising the company at the 2006 FIFA [football] World Cup, despite Budweiser being the official beer sponsor. Stadium officials forced the fans to strip off and watch the game in their underwear.

Then in the 1992 Summer Olympics in Barcelona, American Express ran advertisements stating that visitors to Spain "don't need a visa". Visa, the official sponsors, did not take any action, and American Express claimed that it was legitimate advertising and not ambush marketing.

Storm in a teapot

There has been quite a lot of publicity over a German company, Seelig & Hille, trying to get a little tea shop in London to change its trade mark on the grounds that it would confuse customers, even though  the German company does not trade in the UK.

The Daily Telegraph article is typical of the coverage. I may have missed it, but none of the articles seem that you apply for specific goods or services within specific classes of the Nice Classification, not for everything. Here is the German trade mark, registered through the Community system.

   

Class 30, drinks, is covered. Now for the offending trade mark application, made through the UK system:

It's true that they are both for the appearance of a teapot, but the UK application details show that besides Class 30 they asked for Class 43, catering services.

Jemma Swallow, the proprietor of The Tea Box, could have dropped Class 30 and kept to Class 43 to avoid conflict. I don't know if this was put forward as an argument, but in the end the Germans backed down, and it did not go to a court case. The Tea Box faced the possibility of huge legal bills, but had kept their nerve.

It occurred to me that others must have used the logo of a teapot for selling tea or for catering services. The official UK database, which indexes the wording and images of both British and Community trade marks, can be searched by the Vienna Classification for the "image" of a teapot. Class 11.03.14 is for teapots, coffee pots and kettles and has 141 hits, with lots of teapots (admittedly, many are by the same Seelig & Hille). I wonder if they were put forward as evidence of previously registered marks.

"Trademarked" book

Trade marks / trademarks are a rich source of social and economic history, as, though in theory there to show the origin of the goods or services, they are of course used to persuade us to buy.

David Newton, a former member of staff at the British Library specialising in intellectual property, has written a book called "Trademarked: a history of well-known brands from Aertex to Wright's coal tar", published by Sutton Publishing.

Profusely illustrated from the official journals and other sources, it tells the stories behind numerous trade marks within eight themed chapters such as drinks or household goods. Mainly covering British trade marks, it is excellent for dipping into.

I would be delighted if the old trade mark journals, which display advertised marks, could be scanned and made available on the Web. Just browsing through the pages of a specific era can be very evocative, besides the ability to search for specific companies or trade marks. I am not aware of any such projects.

The Magic Tree®

In looking through the May issue of CIPA, the journal of Britain's patent attorneys, I see that there has been a court case over the application for a Community Trade Mark which showed the outline of a tree (with boots) with, on it, the words "Aire limpio".

Julius Sämann Limited opposed the application on the grounds that their Arbre Magique® trade mark in the same European system, also for an air freshener and with a fairly similar outline of a tree, conflicted. Their product is better known in Britain as The Magic Tree® , which was applied for in 1984. It is the familar thingy that dangles down from the rear view mirror in so many cars.

What I had not realised was that Julius Sämann of Zurich had applied for a patent for a Container for Volatile Substances as long ago as 1959 -- with the same outline. I'm surprised it received a patent. That American patent long ago passed out of protection, but the company is clearly, and understandably, still keen to keep its competitive edge. They have invested a lot in the product.

The result ? The OHIM office at Alicante had ruled that they were not similar. Perhaps the fact that the Italian words mean "clean air" helped. However, the Board of Appeals agreed that the shape had acquired a distinctive character through use -- people were likely to be reminded of the older product.

The decision is discussed by the new Class 46 blog.

The Tardis and trade marks

I read in yesterday’s free Metro newspaper that there is a Doctor Who exhibition at London’s Earl’s Court, which runs until the 18 September.

I wasn’t really a fan of this television series which has been going, on and off, since the 1960s. I only watched it if I had nothing better to do, and remember noticing how little was spent on the sets, and that many alien worlds seemed to be located in abandoned china clay pits in Cornwall. I understand that more money is now spent on this science fiction series.

The article was written by a fan, who has changed his surname to Who. Dale Who explained how he had bought a reproduction of the police box that is used in the series from a theatre company for £30.

Police boxes aren’t used anymore. They were special blue cubicles which the public could enter to phone the police. In the series, Doctor Who uses one, the Tardis, which has a huge interior once you enter it. When it departs on its time travels, it does so with a strange grinding noise, familiar to fans.

It reminded me that the BBC, who make the series, once had a dispute with the Metropolitan Police Authority about the use of the mage of a police telephone box as a trade mark. The BBC had applied in 1996 for the use of its image in various marketing and entertainment fields. The police objected, but in 2002 this was rejected by the patent office examiner in a hearing when he pointed out that they weren’t used anymore. His summing up is full of detail. The BBC themselves ran a story about their victory.

The current registration that had been in dispute shows the three images in colour together with the words "Police Public Call Box". No mention of the Tardis.

In 1976 the BBC had applied for the word Tardis together with an image of the the police box for games, but not as a toy police box. This is also a current registration. There can be a fine line in what can be considered acceptable and not acceptable by those that might be offended.

Also relevant to the series, the BBC has registered the use of The Daleks (applied for in 1964), Doctor Who (1976) and Cybermen (1996) for various activities. These can be found on the official trade mark database.

Consultation on trade marks

The UK Intellectual Property Office has launched a consultation on the modernisation and consolidation of the trade mark rules.

It involves revising the Trade Marks Rules 2000 to avoid "duplication, inconsistency and possible confusion"; bring the UK into line with best practice, and enabling ratification of the Singapore Treaty on Trade Mark Law; making the tribunal system "more flexible, efficient and proportionate"; and introducing business changes to increase the speed and efficiency of processes and reduce costs.

Comments are requested by the 26 May.

"Freedom of information" as a trade mark

I was looking through the little "fillers" in today's Daily Telegraph -- often more interesting than the major articles, if only because you are left wanting more on some stories -- when I came across the statement that the phrase "freedom of information" had been sought as a trade mark by the government.

Sir Hugh Laddie, who was a distinguished patent court judge and then retired when, promoted to be an Appeal Court judge, he found it too boring, had given a speech at University College, London. It marked his inauguration to the Chair in Intellectual Property. He had spoken about "completely unnecessary or excessively long intellectual property rights", which undermined the system, which was thought-provoking in itself. He went on to say that the Ministry of Justice had sought to trade mark the phrase "freedom of information". "Thus restricting its use", added the anonymous writer.

It was news to me that the expression was a trade mark, but it would only be for explicit goods or services within specified areas of business activity. Avid to know what was going on, I went to the official UK trade mark database and slipped in the phrase. Three hits resulted.

In fact in June 2003 the Information Commissioner had registered its use within four classes. These included brochures, data protection, publishing, and legal services related to the Data Protection Act 2000 "and similar statutes". This would mean that no one else could use the phrase for those activities, and hinted that the Commissioner wanted to use it for such activities. Trade marks do not block any use of a phrase at all -- that would be what the trade calls a 6ter: flags, acronyms, and so on which governments don't want used in trade. There is a database on the subject. If a trade mark is not used at all within 5 years then its registration can be challenged.

In December 2004 the Department for Constitutional Affairs registered the phrase for activities such as the provision of business information, in a logo featuring an opening book. Again this sounds fair enough to me. Despite urban myths, such registrations do not prevent people using the phrase in conversation or in print, just for use in selling such services.

And the third hit ? The same, but in a bilingual version for Wales.

The UK's official trade mark database

As of today, there is a new look to, and new features in, the (free) official British database of registered trade marks. It contains both national marks and those international marks (Community, and Madrid Agreement Protocol) which apply to the UK.

Besides incorporating the former beta search option, it includes some other useful features. I will describe them in order as you move down the search page (much the best thing to do, to avoid error messages). Helpful advice is given in the right hand margin.

Searches will be assumed to be for words alone (and not images such as an owl or mountain) unless this is altered in the box at the top of the search page. Images, or images and words, can be selected.

Next you select any words wanted. The search will default to the maximum found, "contains string", unless altered. Hence a search for "teruni" will find Manchester United. This was the beta feature.

Next you select the images, a new feature. This is based on the Vienna Classification. You click open three successive boxes to drill down to a specific class. Hence mountains would be found by asking category 06, Landscapes, and then 01, to make 06.01. A further image class can be requested.

Next the Nice Class can be requested. This is the area of activity in goods or services. The Classification link in the left hand margin offers an excellent, in-house tool for identifying possible classes.

Finally you can limit the search by filing date or by status (registered, applied for and so on). Only registered, applied for and recently lapsed applications will be present.

The hit lists are presented in an attractive manner, with any images present appearing even if a word search was requested. A search for Paramount as a word together with Vienna class 06.01 gave me 19 results, some looking rather unusual. A useful feature is that you can add specific marks to a "picking list" for later study. I would encourage running different searches (by spelling, or by criteria requested) to build up a list, rather than a too hasty one-off search.

All this makes quite a useful package. It is important, though, that users are aware of what is lacking. The Companies House database should also be searched to look for similar marks among registered company names. A search for proprietors (owners of marks) will give, as explained, only those in the UK system. And inevitably, there will be bugs in the system.

Lots of information on trade marks is given by the UK Intellectual Property Office.