RioBrand's Industry Diary

London: 16 May 2001

• The appeal of Green
• Gunners lose but earn a replay
• Jeans ruling gives Levi's the blues
• Easier Goodbyes in Dubai
• No buddies in the Budweiser battles
• WIPO gives designers a chance to make their mark
• The not-so-subtle alternative to cybersquatting
• Spanish court upholds skirts

The Appeal of Green

On 30th March the Court of Appeal in Northern Ireland issued its decision in an important case involving single colour trade marks. BP Amoco took action against a local company, Kelly Fuels, over the use of a predominantly green get-up for the latter's service stations. Kelly counterclaimed and argued that BP's colour trade mark registrations were invalid, primarily because BP had always intended to superimpose its logo and other matter on to the green surfaces.

The judgement held that the registrations were valid and found that Kelly were infringing them, although a passing off claim was dismissed. The finding of infringement was made despite Kelly's use of their own 'top' logo superimposed upon the green livery of their canopies and main identification signs. Kelly have been given six weeks to re-image their sites and although the Court of Appeal denied them permission to appeal to the House of Lords they have indicated an intention to make a direct petition to the Lords in a bid to have the judgement overturned.

Gunners lose but earn a replay

In a controversial decision, Mr Justice Laddie has rejected a claim by Arsenal football club that unauthorised apparel being sold by a street trader infringed their trade mark rights. The defendant successfully argued that he was merely using the club's name and logo as "badges of allegiance" and the finding will send shock waves through the boardrooms of all of the top UK soccer clubs who have enjoyed growing income from such merchandise. For example, Arsenal, popularly known as the Gunners after the cannon featured in their logo, are reported to earn over £5 million per annum from sales of their official range of shirts, scarves, hats, badges and other products but now the profitable line is at risk.

However the judge did agree that the case should proceed to appeal and at a further hearing he will decide whether it should go to the Court of Appeal or directly to the European Court of Justice.

Jeans ruling gives Levi's the blues

On 5th April EU Advocate General Christine Stix-Hackl issued her keenly-awaited opinion in the dispute involving UK retailer Tesco and its parallel imports of Levi's jeans from outside of the European Economic Area (EEA), stating that unless a brand owner keeps tight control of its product distribution its rights to interfere could be exhausted.

The case revolves around whether there was implied consent to such imports by virtue of the circumstances of the original marketing of the jeans. The UK court had sought guidance on several questions relating to the issue of consent but the ruling puts the onus back on the national courts to ultimately decide if the facts of a particular case support a finding that the brand owner has by its conduct waived its exclusive right to control distribution within the EEA.

The ruling left both sides claiming success and it will therefore be down to the UK court to finally decide whether such import and sale may continue.

Easier Goodbyes in Dubai

The laws governing agency contracts in some Middle Eastern countries have in the past caused concern for many owners of international brands. Termination of contracts with registered commercial agents and distributors has tended to be a difficult and expensive process with the local partner often being entitled to substantial compensation.

Two recent decisions issued by the courts in Dubai suggest that attitudes are changing. First, the highest court in the Emirate, the Dubai Court of Cassation decided that if the local agent has transferred its rights to another party without the approval of the foreign principal then termination of the arrangements without compensation is permissible. Then the Dubai Court of Appeal held that Ford Motor Company could terminate its agreement because their local agent had not achieved the agreed performance targets, although this judgement may yet be appealed further.

No buddies in the Budweiser battles

Carlsberg ads in many countries claim that theirs is probably the best lager in the world but the world's longest running trade mark dispute must surely be that involving the BUDWEISER brand. Early last century Anheuser Busch of the US and Czech brewer Budejovicky Budvar signed an agreement relating to the US market but elsewhere the fighting has continued with both parties experiencing their fair share of fizzy success and flat failure.

It is rumoured that trouble is again brewing and that the battle of the bottles is all set to go another round in the British courts in an attempt to resolve their respective claims to the brand.

WIPO gives designers a chance to make their mark

The late Lord Lloyd of Kilgerran once commented that WIPO sounded like the brand name for a cleaning product. Now the member states of the World Intellectual Property Organisation have decided that it needs a new logotype and the Organisation is making sure that there is no chance of selecting something unintentionally amusing by inviting professional graphic designers to submit their ideas in a global competition.

They are seeking proposals for an emblem that better represents the dynamics of the Organisation and its transformation and revitalisation in recent years. The first prize is 25,000 Swiss Francs, plus a fee of 35,000 Swiss Francs for assignment of copyright in the design. There are prizes of 15,000 and 10,000 SF for the runners up but overall the cost could compare favourably with the cost of hiring a consultancy to tackle such a project. The closing date for entries is 31st May 2001 and full details are available from WIPO's website at http://www.wipo.int.news/en/logo/index.

The not-so-subtle alternative to cybersquatting

As the courts and other authorities increasingly clamp down cybersquatting a new money-making practice has become increasingly commonplace: owners of major brands are being telephoned by domain name registration agents who claim to have received instructions from undisclosed clients to register names incorporating the relevant brand name. The agent explains that they realise such registrations in the hands of a third party would cause problems for the brand owner and so they are calling to offer to delay acting on the instructions and to register the names for the brand owner instead, before reverting to their original client with the bad news that the names have already been taken by the brand owner.}

The first time a brand owner hears the sales pitch it might sound plausible but sooner or later they realise it is simply a sales gimmick by unscrupulous agents. Some major companies report receiving several such calls a month.

However the practice appears not to have yet been named, which is surprising given the rate at which IT normally spawns new terms. The use of market research as a cover for selling is known in marketing circles as 'sugging' (derived from 'selling under the guise of…') so perhaps 'poling' (from 'pretending to offer to leapfrog earlier instructions') is apt. No doubt readers can do better than that, so please submit suggestions to diary@riobrand.com -a catchy name will help the practice to be more easily discussed, discredited and eliminated.

…and finally - Spanish court upholds skirts:

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