RioBrand's Industry Diary

London: 17 October 2001

• Bin Ladin -the brand
• Nelson refuses to turn a blind eye
• The dot-biz quiz
• Rock star turns ugly
• HM's confusion over TMs
• Ralph Lauren's Polo matches
• Happy nappy chappies
• Devil of a case
• Putting Budweiser on the map
• Wrestlers seek re-match with panda
• Reverse product placement
• And finally
  

Bin Ladin - the brand

The world's most wanted man, Osama bin Laden, comes from a rich family in Saudi Arabia, whose wealth largely derives from a huge industrial conglomerate with interests in construction, retailing and telecoms. Businesses all over the world are feeling the effects of the terrorist attacks and not surprisingly this one is no exception. The company, in common with most of the family members, prefers to transliterate its name as 'bin Ladin' and it also makes great efforts to dissociate itself from its wayward son in other ways.

It has already suffered a backlash as some business partners review their relationships and the company now faces a difficult future with re-branding, at least, seeming inevitable. A pending Community Trade Mark application for 'BIN LADIN', filed last May by a Swiss company called Falcon Sporting Goods AG (presumably connected in some way to the Saudi conglomerate) suddenly has little commercial potential.

Nelson refuses to turn a blind eye

Nelson Mandela was forced to threaten legal proceedings against a Cape Town fast-food outlet calling itself 'Nelson's Chicken & Gravy Land'. The owner apologised and claimed no disrespect was intended, even though the sign used at the shop featured a cartoon drawing of an elderly black man that was thought to resemble the former President and the menu included items such as 'Nelson's Freedom meal' and 'Nelson's Peace meal'.

Mr Mandela's lawyers invoked the provisions of the Merchandise Marks Act, 1941 which prohibit the unauthorised use of the 'name, portrait or effigy' of a former President of the country.

The dot-biz quiz

Those who thought the method used to allocate the new top-level '.biz' domain names (TLDs) was a bit of a gamble may not be surprised to hear that in Los Angeles class action lawsuits have been filed which allege just that. NeuLevel, Inc -the dot-biz domain name registrar- faces claims that the process, which involved payments being made even though no registration was assured, amounted to an illegal lottery.

However on 26 September, when the matter first came before a court, the judge refused to block the issue of the first batch of .biz domain names but NeuLevel has agreed to delay the release of the names until after a further hearing in mid October.

The situation has been further complicated by counter-claims brought by NeuLevel, who have asked a Virginia court to approve their processes but the disputes may yet be resolved if NeuLevel offer to refund the fees paid by unsuccessful applicants.

Rock star turns ugly

Leading Chinese rock musician Zang Tianshuo has sued two websites, www.wanga.com and www.netease.com who published the results of a poll, which ranked him the third ugliest singer in the country. The court in Beijing awarded him US $ 2,620 in damages, in a case that suggests that China may be starting to copy the litigious ways of the West.

HM's confusion over TMs

Surprising evidence has emerged that the Welsh names used by two of London's leading retailers may be confusingly similar. The Sunday Telegraph reports that during a speech delivered at Eton in early October the Queen intended to thank headmaster 'John Lewis' and his staff for looking after her grandsons. Unfortunately, in a rare public blunder, Her Majesty erroneously referred to him as 'Peter Jones' -the name of another of the capital's department stores, as the Duke of Edinburgh quickly pointed out.

Ralph Lauren's Polo matches

Ralph Lauren's famous 'POLO' brand has led them into disputes with polo clubs on both sides of the Atlantic. In the UK their successful opposition against the device mark '10 Royal Berkshire Polo Club' was overturned on appeal, for want of a 'genuine and properly substantiated likelihood of confusion' and the sportsmen's application was allowed to proceed to registration.

Now one of the company's old adversaries, the U.S. Polo Association, has brought a complaint before the New York courts seeking damages of at least US $ 100 million as compensation for what it describes as malicious actions intended to destroy its sports merchandising programme. Letters sent to retailers by Ralph Lauren triggered the latest flare up as the polo association alleges that they contained disparaging statements and several other grounds for action.

Happy nappy chappies

The European Court of Justice (ECJ) has found for Proctor & Gamble in their appeal against the refusal of the Office for Harmonisation in the Internal Market (OHIM), the Board of Appeal and the Court of First Instance to register the trade mark 'BABY-DRY' for nappies. P & G's Community Trade Mark application had been refused in the lower tribunals and court because of the descriptive nature of its component words, which had been held to lack the distinctiveness required for registration.

The ECJ considered the likely reaction of an English-speaking consumer to the two words comprising the mark and concluded that such juxtapositioning would be considered unfamiliar. Its decision will provide encouragement to owners of other marks that consist of a combination of descriptive words as they attempt to persuade OHIM and national TM registries that the word combinations amount to 'lexical inventions'.

Devil of a case

Proctor & Gamble's run of good fortune continues. On 1st October the US Supreme Court held in their favour in the long-running battle with Amway over allegations that the famous P & G 'man in the moon' logo was evidence of a link to Satanism.

The dispute, which involved freedom of speech arguments as well as trade mark infringement and racketeering issues, has been running since the mid 1990's when an Amway distributor revived the devilish rumours that had originally surfaced decades earlier. The Supreme Court refused to overturn the finding of the lower courts that such allegations were not entitled to the protection of freedom of speech provisions that are enshrined in the US constitution.

Putting Budweiser on the map

The latest round of the even longer running dispute involving the Budweiser brand has seen the Commercial Court in Vienna seek guidance from the ECJ by referring four questions arising from the geographical significance of the mark (which derives from Budvar, the name of the town where the Czech plaintiffs are based). The questions relate to the applicability of obligations arising under bilateral agreements between an EU Member State and a non-member country concerning protection of indications of source.

Wrestlers seek re-match with panda

On 1st October the UK High Court gave permission for the World Wrestling Federation to appeal against a decision that it was in breach of a 1994 agreement with the World Wide Fund for Nature in which it had undertaken to limit its use of the initials. The appeal is expected to be based on arguments that the agreement is unenforceable because it breaches EU competition law and is an unjustified restraint of trade.

The parties were using very similar domain names (the wrestlers use www.wwf.com and the wildlifers use www.wwf.org) and Mr Justice Jacob accepted that the increasing importance of the Internet was material to the dispute. Following the main hearing on 10th August BBC News 24 television interviewed Riobrand's CEO, Thomas Golsong, about the implications of the case for organisations wishing to use similar brands in different fields of activity.

Reverse product placement

Product placement, where brand owners pay movie or TV companies to feature their products prominently in film sets, is commonplace. Now Miles Kington, writing in The Independent, suggests that companies should also consider funding what he calls anti-product placement -paying producers to show competitors' products in a negative light.

By way of an example, he suggests that Pepsi should consider not only putting up funds to have the hero shown drinking their cola but also consider paying even more generously to have the villain shown swigging Coke -and be seen spitting it out in disgust. It is an amusing idea but one that seems unlikely to be put into practice for fear of litigation.

…and finally

Down in deepest Tennessee two US Pentecostal churches are also shaping up for another round in their ongoing fight over the use of similar identifying flags, only two years since they appeared before the Trademark Trial and Appeal Board. According to the report in the Chattanooga Times Free Press on 2nd October, the Church of God of Prophecy believe that the Church of God are in breach of an agreement not to use a similar flag design. The churches originally comprised a single denomination but split up in 1993.

The Church of God admit that they adopted their flag against the advice of their attorney but their general overseer plans an unorthodox line of defence: 'We'll let the Lord handle that' he said.

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