Full Beam: the Riobrand diary

01 May 2003

• Queen's company goes on bended knee
• Backlash backfires
• Sony experiences 'Shock and awe'
• Easy job may prove to be hard work
• Wrestlers and panda fight an extra round
• Parting in Sassoon hair contract
• Body Slam for Kellie Martin cybersquatter
• BT piper plays last post
• Esso blues over Greenpeace victory
• Johnniewalker.me.uk comes to rest
• Pulling out all the stops for Dot.eu names
• Banks have high rates of interest - but only in re-branding
• ...and finally
  

Queen's company goes on bended knee

Flitcham Limited, a company which handles some of the Queen's private interests, including managing certain aspects of her personal homes at Sandringham and Balmoral, has encountered difficulty in registering 'BALMORAL' and 'BALMORAL ESTATE' as trade marks in the food and drink classes. A prior registration belonging to New South Wales vineyard Rosemount Estates Pty Limited was cited as an obstacle but the Australian company graciously consented to the applications, which cover Scotch whisky and water but do not extend to wines.

Backlash backfires

According to research conducted in the US consumers are boycotting products and companies with French and German connections in retaliation for the opposition of those countries to the military action in Iraq but they have become more favourably disposed towards British companies or products. However some of those polled are reportedly confused about product origins and mistakenly believe brands such as Dutch beer Heineken or US yoghurt Yoplait are, respectively, German and French. Conversely, many US consumers mistakenly believe French food brand Danone to be American.

Meanwhile in countries such as France and Germany campaigners are encouraging boycotts of US products and to a lesser extent British products. Some Hamburg traders are threatening to refuse American Express or other US credit cards and in Greece there have been calls to shun US films. There are some claims that locally produced substitutes -such as Mecca Cola produced in France and targeted at Muslims who wish to avoid Coke and Pepsi- are enjoying a boom in sales.

There is some comfort for the affected brand owners as one of the poll companies claimed that people typically over-report their intentions. The researchers therefore plan follow-up investigations to discover whether aggrieved consumers actually carry out their threats.

Sony experiences 'Shock and awe'

On 21st March, the day the bombing started in Iraq, a Sony subsidiary in the US filed a trade mark application for the term 'SHOCK & AWE' in respect of software for computer and video games but it has since decided to withdraw the application and has apologised for what it describes as 'an exercise of regrettable bad judgement'. However other applicants seeking to register the same mark with the US Patent & Trademark Office -in respect of everything from fireworks to barbecue sauce and from legal services to greetings cards- are certainly not in the mood to surrender and are enthusiastically maintaining their applications. The gung-ho mood has extended to other recent filings in the US, with applicants seeking to protect trade marks such as 'IRAQI FREEDOM' in respect of clothing or drinking glasses and coffee mugs.

Easy job may prove to be hard work

The phenomenal growth of EasyGroup since Stelios Haji-Ioannou founded it five years ago, coupled with its famously robust approach to brand protection, has led the business to create a position for an in-house trade mark attorney. The company continues to file opposition to many third party applications for 'Easy…' marks and it recently filed Community Trade Mark applications for a number of phonetic equivalents of the word 'easy' namely EASI, EAZI, EAZY, EESY, EEZY, ESI, ESY, EZ, EZI and EZY. Subsidiary easyInternetcafe was recently embroiled in litigation with Sony and other record companies and found guilty of copyright infringement but an appeal is under consideration. It all suggests that an exciting and challenging role awaits but the successful applicant should certainly not expect an easy time.

Wrestlers and panda fight an extra round

You may have thought the long-running dispute between the World Wide Fund for Nature (formerly the World Wildlife Fund) and the World Wrestling Federation over the use of the WWF initials had reached the final bell but another skirmish has reached the UK courts. A licensee who had been granted permission in 1998 to use the Federation's marks in computer/video games and who was previously unaware of the Agreement between the parties that had led to the main litigation, sought a declaration from the court that its continuing use would not breach the injunction, or in the alternative it requested a staying of the injunction.

Mr Justice Jacob held that continuing use by the licensee would amount to a breach of the injunction by the Federation and that the licensee would be aiding and abetting the contempt of court. The judge also refused to stay the injunction, despite the substantial financial damage that the licensee would suffer, because he felt that compensation would be available for the losses under the indemnity clause contained in the license.

However on 27 March the Court of Appeal upheld an appeal by the licensee, holding that the licensee was entitled to an appropriate declaration to protect its interests. The court took the view that, in the absence of clear wording to such effect, an injunction could not be interpreted as imposing on an injuncted party responsibility for the acts of independent entities.

Parting in Sassoon hair contract

Another trade mark licensing deal is experiencing difficulties - Vidal Sassoon is suing Procter & Gamble over damage he alleges has been caused by shortcomings in the company's marketing of hair care products bearing his name. He is alleging breach of contract and fraud and claiming compensatory damages. P&G acquired the rights to the brand following its 1985 acquisition of Richardson-Vicks but the celebrity hairdresser was outraged when the company recently announced that sales in Europe and North America would be discontinued.

Body Slam for Kellie Martin cybersquatter

The actress Kellie Martin, whose films include Open House, Malibu's Most Wanted, All You Need, Matinee, Troop Beverly Hills, Body Slam and Jumpin' Jack Flash, found a sympathetic Panellist to decide her Complaint against the registrant of the domain name 'kelliemartin.com'. Although she had no registered trade marks, Timothy D Casey sitting as a Sole Panellist decided that her successes in TV and film had created common law rights in respect of entertainment services and he held that her name had achieved secondary meaning and association with her. Accordingly he ordered that the domain name registration be transferred to her.

The registration had been made in the name of 'Domains, Best Domains' an entity that the ruling decided was fictitious and used by an individual called John Barry. It was alleged that Barry had used the domain name to redirect internet traffic to an anti-abortion website.

BT piper plays last post

BT has decided to pension off its 'prancing' piper logo after 12 year's loyal service. The controversial mark had been introduced in 1991 as part of a major re-imaging programme costing more than £50 million but it will be replaced by the 'connected world' logo, which BT has already been using for its Internet access service.

The new logo was designed in the late 1990's by Wolff Olins, reportedly for approximately £150,000, and BT hopes it will more effectively signal the fact that their business reaches beyond fixed-line telecommunications and extends into sectors such as consultancy and Internet services. This time there will be no big budget to back up the rollout of the new identity across the Group -it will be phased in gradually over a period of 3 years at a total cost of less than £5 million.

Esso blues over Greenpeace victory

In a case which sets a worrying precedent for brand owners, a French court has lifted the injunction preventing Greenpeace from using a modified version of the Esso logo as part of the environmental group's campaign against the oil company. The controversial parody, in which the 'SS' letters were replaced by two dollar signs '$$', was deemed acceptable as part of the right to free speech. Esso were rightly disappointed by the decision and said that whilst they did not object to Greenpeace's right to protest they did not accept antics such as the distortion of their corporate logo.

Johnniewalker.me.uk comes to rest

The parties battling over the domain name 'johnniewalker.me.uk' had to settle for a draw. The name had been registered by Mr John F Walker and he had been using it for a website offering training and advice relating to the use of the Internet and website development but Guinness United Distillers objected on the basis of its trade mark rights in the 'Johnnie Walker' whisky brand.

The drinks company claimed that the auto-reply from Mr Walker's website was signed 'John Walker' and it disputed his claim that he had been nicknamed 'Johnnie' since he was a child. Nominet noted that his website contained several references to alcohol and a representation of an apparently intoxicated man walking across the screen.

Nominet UK ruled that the registration was 'abusive' but refused to transfer it to the drinks company because it felt that ownership of such a domain name by a corporation without the specific agreement of a natural person who shares it (or a suitably similar) name would also create an abusive registration. In the circumstances the Expert decided to simply suspend the name.

Pulling out all the stops for Dot.eu names

The long-awaited '.eu' domain names will soon be a reality. Unconfirmed reports suggest that the contract to operate the registry will be awarded to a new Brussels-based consortium called the European Registry for Internet Domains (EURID). The not-for-profit organisation has been founded by the Belgian, Italian and Swedish ccTLD registries but with participation by associate members drawn from the Internet community. The formal announcement is expected later this month but it is still likely to be at least six months before the registry commences operations.

Meanwhile, some businesses have been seeking to register trade marks incorporating the stem -hoping, perhaps, to bolster their claims to a particular name in advance of the registry opening for business. For example, German company Weihermueller Voigtmann GmbH filed a German trade mark application for 'medi.eu' covering several classes of goods and services and British company Cable and Wireless PLC has registered cableandwireless.eu as a Community Trade Mark. However an attempt by RITEC GmbH to register simply '.eu' as a CTM ended in disappointment for the German company when the application was refused but a later application for the same mark filed by Irish business EUROPOC is still under examination.

Banks have high rates of interest - but only in re-branding

Despite the gloom prevailing in the sector, re-branding projects remain a popular investment for banks and financial services companies, although most appear to be trying to minimise expenditure on the schemes. For example, the team responsible for the management buyout at HSBC Private Equity have simply decided to revive the revered old name of Montagu, which had been dropped in 1996.

Meanwhile Warburg, one of the City of London's most famous banking brands, is being phased out. Switzerland's largest bank, UBS, has owned Warburg since 1998 but it has decided to consolidate all of its global operations under the UBS brand. The move also spells the end for Paine Webber, the name of the 130-year-old US private client business acquired by UBS in 2000.

…and finally

Many sports celebrities launch a range of merchandise bearing their name and cricketer Shane Warne, presently banned from the sport after testing positive for a diuretic, may now be planning to follow suit. However the Australian star appears to be ignoring predictable merchandise opportunities such as posters, sportswear or cricketing equipment and has instead applied to register his name as a UK trade mark only in the two classes which contain alcoholic drinks. As his team mates might put it: 'good on yer, mate'….

Diary Index

Home