RioBrand's Industry Diary

London: 20 June 2001

• Bit bites Bud
• Wolff joins a new pack
• Faulty shades of green
• Arsenal head for Europe
• Legal Eagles
• Domain name defendant hits back
• Compass points away from Granada
• And finally

Bit bites Bud

The Federal Court of Justice in Germany has held that the trade marks 'Bit' and 'American Bud' are likely to be confused because drinkers are liable to abbreviate the latter mark to 'Bud'. The ruling was made in response to an appeal by US brewers Budweiser who were seeking a declaratory judgment that the mark did not interfere with the rights of German brewer Bitburger whose marks include a registration of its own abbreviated name: 'Bit'.

However the court decided that another of Budweiser's marks, 'Anheuser Busch Bud', did not conflict with the rights of Bitburger as it would be likely to be abbreviated to 'Anheuser'. Budweiser is already prevented from using its main international marks 'Bud' and 'Budweiser' in Germany, even though elsewhere in Europe and in the US the marks co-exist with the Bitburger brand.

Unfortunately the controversial judgment stopped short of suggesting how many bottles of the beers need to be consumed before a drinker is likely to confuse the marks…

Wolff joins a new pack

US advertising group Omnicom, parent company of Interbrand, have added another leading international branding consultancy to their stable with their purchase of London-based agency Wolff Olins for an estimated £30 million.

Faulty shades of green

Last month we reported that BP had prevailed in an infringement action brought against Kelly Fuels, an operator of green service stations in Northern Ireland but that the defendants were attempting to take the case to the House of Lords. We have now learned that Kelly have abandoned their appeal petition and so the decision of the Court of Appeal will stand as the final ruling in the case.

Arsenal head for Europe

Although the new football season is still a couple of months away Arsenal already have a fixture on the continent: Mr Justice Laddie has now referred to the European Court of Justice the dispute between the club and a trader who was held not to be guilty of trade mark infringement or passing off because his goods used the marks as 'badges of allegiance' rather than to signal trade origin.

However, Arsenal are also seeking leave to take the case to the UK Court of Appeal and they are hoping that the higher Court will consider a reference to Europe to be inappropriate at this stage. The result of the case will be of great interest not just for sports teams but also for music groups and other entities that currently profit from selling branded merchandise to their fans and who rely upon trade mark laws to control the sale of unauthorised goods.

Legal Eagles

Eagles Ltd and Eagles Recording Co., two companies belonging to US rock group 'The Eagles', are reported to have dropped the lawsuit that they brought against the American Eagles Foundation, a not-for-profit organisation dedicated to the preservation of America's national bird. The companies alleged trade mark infringement citing the charity's use of symbols that were similar to those used on their American Eagle record label and also objected to the use of the domain name 'www.eagles.com' and the telephone number 1-800-2-EAGLES.

The legal proceedings had been pending for three years and the trial was due to be heard in mid-June but in a surprise move lawyers acting for the plaintiff announced that owing to key witnesses being unavailable (the group is currently touring in Europe) the case was being dropped. Just in time to avoid an 'egg on face' situation?

Domain name defendant hits back

Early last year Wal-Mart invoked the ICANN complaints procedure at WIPO against the registrant of the domain name walmartcanada.com and they succeeded in getting it handed over to them. In December they challenged the registration of the domain name wallmartcanadasucks.com by the same defendant but they were unsuccessful because the name differed slightly from their trade mark and the ICANN panellist was not persuaded that it was likely to cause confusion.

The controversial domain name has, predictably, been put to use for a site dedicated to providing an outlet for criticism and complaints against Wal-Mart.

Wal-Mart also decided to take some pre-emptive action by purchasing other names that had potential to cause them embarrassment, such as wallmartcanadasucks.net, .org and .ca, but the plan has brought unexpected repercussions, as the defendant in the earlier cases is now accusing the supermarket company of bad faith by registering names they do not intend to use. He is threatening to file his own complaint with WIPO unless the company turn the names over to him.

Compass points away from Granada

Compass, the food services group which last year acquired the Granada motorway service centres in the UK, has decided to re-brand them 'Moto' and adopt a reclining angel logo as part of a general review and upgrading of the quality of services offered at the sites. The company claims the new brand 'will change the face of motorway service areas for ever' and long-suffering British motorists will be praying to the angels that they manage to deliver on that promise.

…and finally

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