Full Beam: the Riobrand diary

London: 24 January 2002

• Tigers' clause to replace their claws
• Keywords unlock an easy route to websites
• A beer mark Czechs out
• WTO holds US guilty of discrimination in Cuban brands case
• Tragic trade marks
• Hail the new King Cole
• Brand owners suffer unexpected defeat in extra time
• Brand owners rule in Europe
• WIPO's class act
• Standing still …but still representing progress
• And finally
  

Tigers' clause to replace their claws

Kelloggs and Exxon are believed to have settled the long-running dispute that arose from their respective uses of cartoon tigers. The details have not been disclosed but the deal should bring to an end the litigation and the international series of trade mark oppositions which began in the mid 1980's when Kelloggs decided that Exxon's branding for its Tiger Mart convenience stores conflicted with their own Tony the Tiger icon.

However, there is no truth in the rumour that the parties retained Tigger from the Winnie the Pooh tales to act as mediator.

Keywords unlock an easy route to websites

A new global addressing system promises to complement traditional domain name registration by providing businesses with a user-friendly link to their website for anyone who simply types their brand name in to a browser. Forget the 'http://www' or the '.com' elements -by entering only 'Shell' (to name one company who have already taken advantage of the facility) an enquirer will be taken directly to the company's website.

They are known as 'Keywords' and they are rapidly growing in popularity. One slight drawback is that they function only on a national basis, so companies need to make separate arrangements for each country where they wish to take advantage of the service, at an average cost of approximately £500 per country.

A beer mark Czechs out

Meanwhile the much older battle between the two claimants to the Budweiser brand continues. The latest round was fought before the UK High Court, where the US company Anheuser-Busch sought revocation for non-use of two marks that had been registered by its Czech 'sparring partner' Budejovicky Budvar Narodni Podnik.

The court held that one of the marks should be struck off because it had only been used in a form that differed materially from the registered form. However the other registration was allowed to stand because the mark had been used for promotional purposes in a form which, whilst differing from the registered version, did not alter the distinctive character of the mark.

WTO holds US guilty of discrimination in Cuban brands case

On 2nd January the appellate body of the World Trade Organisation issued its decision in the case brought by the European Union against the US law preventing registration of trade marks that had suffered confiscation by the Cuban authorities. The ruling held that the US legislation breached WTO rules which prohibit discrimination against trading partners and which requires equal treatment for foreign and domestic entities.

The complaint stemmed from an underlying dispute between Pernod-Ricard and Bacardi over the 'Havana Club' brand and the verdict is expected to result in amendment of the offending law.

Tragic trade marks

Applications have been filed in the US for a number of logos which reflect the terrorist attacks of 11th September. According to a report in the New York Times, more than two dozen filings have been made for such marks -many incorporating a stylized version of the date where the figure '11' is represented by the twin towers. Some of the applicants are fund-raising organizations but most are commercial entities, although all deny that they are attempting to profit from a national tragedy.

Hail the new King Cole

The UK Trade Marks Registry has blown the whistle in the match between two footballers who each claimed entitlement to the designation 'King Cole'. The application, which was filed by Joe Cole of West Ham, had been opposed by his senior England colleague Andy Cole, who was recently transferred from Manchester United to Blackburn Rovers.

The Registry's Hearing Officer was unimpressed by press cuttings showing the phrase used in relation to the opponent and decided that the only evidence of use by the opponent -upon a Christmas card sent out in 1994- was not utilisation as a trade mark. The opposition failed and the young pretender has assumed the crown.

But for how long? While these two have been preoccupied with their dispute another namesake, Ashley Cole of Arsenal, has been grabbing the headlines with some superb performances and may now feel he has the strongest claim of all to the laudatory title!

Brand owners suffer unexpected defeat in extra time

On 5th December the US Court of Appeals for the First Instance confirmed that the Anticybersquatting Consumer Protection Act ("ACPA") can over-rule decisions made under the Uniform Domain Name Dispute Resolution Policy ("UDRP") operated by the Internet Corporation for Assigned Names and Numbers ("ICANN"). They remanded back to the District Court a case involving a dispute over a domain name "corinthians.com" which had brought the top Brazilian football team Corinthians head-to-head with a US resident who had registered the name and subsequently offered to sell it to the club.

ICANN had previously found in favour of the footballers and ordered transfer of the name. The registrant had then launched an action under the ACPA but the District Court had dismissed the case on the grounds that no actual controversy existed between the parties.

Brand owners rule in Europe

On 20th November the European Court of Justice issued its long awaited verdict in the parallel import cases involving Levi Strauss/A & G Imports and Zino Davidoff/Tesco. The laudably clear-cut ruling confirms that the placing of goods on the market outside of the European Economic Area ('EEA') by the owner of a mark does not exhaust its right to object to their importation into the EEA without its consent.

The judgment also clarifies what constitutes implied consent and confirms that it cannot be imputed from the mere silence of a brand owner, or the absence of any contractual reservations when the goods were sold, or the failure of the brand owner to communicate its opposition to the marketing of the goods in the EEA or the failure to mark the goods with a warning notice prohibiting them from being marketed within the EEA.

WIPO's class act

On 1st January many trade mark registries began applying the latest revised version of the World Intellectual Property Organisation ('WIPO') International Classification of Goods and Services -the 8th edition. It is hoped that the revisions will result in more focused registrations and help to reduce the number of unnecessary conflicts between marks. Three new classes have been introduced with the result that Class 42 no longer contains the wide range of miscellaneous services that it previously did, having now been reserved primarily for legal services, computer hardware/software design and scientific services.

Hotels and food & drink services now fall in new class 43 and class 44 has been introduced for medical, veterinary, hygienic and beauty services along with agriculture, horticulture and forestry services. Personal and social services together with security services for property and individuals are now allocated to class 45.

Standing still …but still representing progress

The Australian Trade Marks Office ('ATMO') has recently granted its first registration of a 'moving image' mark -number 810792 issued to Effem Foods Pty Ltd. However those used to seeing the dynamic representations of brands on the Riobrand database -for example, take a look at the revolving Bombay Sapphire or Vaseline bottles or the animated BP Helios logo- may feel decidedly unmoved if they take a look at the ATMO online search facility because the trade mark consists of a humanoid character 'in static pose or in animation' and in the representation it is simply depicted by a series of cartoon drawings in different poses.

…and finally

The Co-Op a leading UK retailer has announced that it will be adding Braille to the labels of its own-brand alcoholic drinks, having previously been the first British supermarket to incorporate Braille into its medicine packaging. Other brand owners, already used to translating and transliterating their brands into foreign languages, are expected to monitor the move carefully before deciding whether to create Braille versions of their brand names. Whilst it may help the genuinely blind, those who are merely 'blind drunk' or who are seeing double after over-indulgence will derive no benefit, beyond possibly finding it easier to get a grip on the embossed labels.

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