Full Beam: the Riobrand diary

London: 1 August 2002

• Walkman gets marching orders
• Bottoms up for Pina Colada
• Judge gives Barbie the cold shoulder
• Advocate General hits back for Arsenal
• ECJ blunts Philips' shaver mark
• Poetic Justice
• Ratner loses his name
• Bin Ladin exterminated
• Greenpeace oversteps the mark
• Menorah mark extinguished
• Mercedes' rising stars
• TM registries get animated
• Will there be a 'sunrise' with the dawning of .eu domain names?
• Tesco de-bagged by High Court
• Monday mourning for consultants
• Consignia - return to sender
• ...and finally

Walkman gets marching orders

The Austrian Supreme Court has ruled that the term 'Walkman' is generic and that all manufacturers of personal stereos are now free to adopt it. Sony will therefore lose their exclusive rights to the use of the term in that country unless they can find new ways to challenge the verdict. The decision is likely to conclude a dispute which erupted in 1994 when Austrian company Time Tron Corporation used the term 'Walkmans' to describe portable cassette players made by companies other than Sony.

The court took account of the widespread use of the term to describe such products and the fact that an entry in a German dictionary defined the word as meaning any portable stereo player. Normally owners of successful brands try to prevent such events from occurring but it is never an easy task.

Bottoms up for Pina Colada

Another trade mark registration has also bitten the dust: the French registration of Pina Colada was cancelled on the grounds that it had become the ordinary name of the cocktail and had therefore lost its capacity to distinguish the goods of its proprietor from those of competitors. The case relied on provisions introduced to French law by the Council Directive to approximate the trade mark laws of EU member states. Such revocations remain rare in France but it appears that the relaxed attitude of the proprietor towards use of the sign by others appears to have contributed to the Paris Court of Appeal's judgement in this case.

Judge gives Barbie the cold shoulder

On 25 July the Court of Appeals in San Francisco finally decided the infringement case which Mattel had brought against Aqua, the Danish pop group behind the 1997 hit record 'Barbie Girl'. Finding for the band, judge Alex Kozinski said that those hearing the lyrics would not assume that Mattel had authorised them, any more than a previous generation would have assumed that when Janis Joplin sang 'Oh Lord won't you buy me a Mercedes Benz…' that she and the car manufacturer were in partnership. In what is being seen as the one of the most laid back final comments ever made by a judge, he summed up his views with the comment: 'The parties are advised to chill'.

The ruling that the song was an acceptable parody and part of the price to be paid by a 'cultural icon' such as Barbie is the second blow that the doll has recently suffered before the US courts: last year she was refused relief against a Utah artist who photographed her in sexually explicit positions.

Advocate General hits back for Arsenal

On 13 June Advocate General Ruiz-Jarabo Colomer delivered an Opinion in the high-profile case involving Arsenal FC and Matthew Read, the trader who, since 1970 has been selling scarves and other unauthorised merchandise bearing the football club's name and badge. Mr Justice Laddie who heard the dispute when it came before the UK courts last year, refused to ban the sales and sought guidance from the European Court of Justice on the correct interpretation of the Council Directive on the approximation of trade mark laws in member states.

The Advocate General's Opinion shows him to be very familiar with the economic realities of modern sport and a firm supporter of the rights of brand owners. His Opinion recognises that football clubs such as Arsenal "are not mere sporting associations whose aim is the playing of football, but genuine 'emporia' which, with the object of playing professional football, pursue an economic activity of the first order".

Rejecting the view that the function of a trade mark is strictly as an indication of trade origin, which the Advocate General describes as "simplistic reductionism", he suggests that a "trade mark acquires a life of its own, making a statement…. about quality, reputation and even, in certain cases, a way of seeing life". He sees no reason not to protect these other functions of a trade mark and he considers the motivation of purchasers of the goods irrelevant for the purposes of resolving this dispute where there is clearly commercial use made in the course of trade.

The Opinion will be especially welcomed by English football clubs in the lower divisions whose finances have been hard hit by the loss of the revenues expected from their former contracts with ITV Digital. However the case is also being keenly watched by others in the entertainment business, such as musical performers and TV and film companies, whose lucrative merchandising activities would be at risk if the ECJ were to take a view contrary to that of the Advocate General.

ECJ blunts Philips' shaver mark

On 18 June the European Court of Justice finally issued its judgment in the Philips versus Remington case, a long-running dispute over the use of a three-headed design for electric shavers. In 1999 the UK Court of Appeal referred a number of questions to the ECJ, seeking a ruling on the interpretation of the Council Directive to approximate the trade mark laws in member states.

The ECJ confirmed that the Directive was to be construed as precluding the registration of shapes whose essential characteristics perform a technical function. They said it was also the intention of the Directive to prevent registration of signs which cannot constitute a trade mark and that only marks having a distinctive character by their nature, or as a result of use made of them, are capable of distinguishing goods from those of others and are qualified for registration.

The ruling is seen as effectively invalidating the Philips trade mark but it will be up to the national court to decide the case by applying the ECJ's interpretation of Community law.

Poetic Justice

US judge Michael Eakin, who last month was elected to the Supreme Court of Pennsylvania, is becoming famous for delivering his judgments in rhyme. For example, in a case involving a prenuptial agreement he held:
"He seeks to reverse the alleged miscarriage
of enforcing the contract he signed ere the marriage
But a deal is a deal, if fairly undertaken
And we find disclosure was fair and unshaken
Appellant may shun that made once upon a time
But his appeal must fail, lacking reason (if not rhyme)".

On one occasion his poetic verdict was matched in kind by a lawyer who used a limerick to submit his request for an appeal. We are not aware of Judge Eakin yet hearing any intellectual property cases but it could be painful for brand owners to hear what words he might choose to rhyme with their beloved marks.

Ratner loses his name

Back in 1991 Gerald Ratner's remark that one of his company's jewellery products was 'crap' demonstrated just how fragile a brand can be. Shortly thereafter he parted company with the business that bore his name and as part of the damage limitation exercise the management quickly rebranded it to Signet.

Now back with a new online venture in conjunction with jewellers Goldsmiths he had planned to utilise his name but he has lost the battle to resurrect it as his former employers still own the rights to the Ratners trade mark and they feared that if he used it then confusion might result. He will instead be using GeraldOnline as the name of the venture but we are not aware of any plansby him to change his personal name to match.

Bin Ladin exterminated

The Swiss registration of 'Bin Ladin' belonging to Yeslam Binladin (who, in common with most of his family, chooses to spell his personal name differently to his infamous half-brother Osama Bin Laden) has been cancelled by the Federal Institute of Intellectual Property. They explained that the events of September 11 had altered public perception of the sign and it must now be seen in a completely different light from the trade mark examination perspective.

In contrast, the Community Trade Mark application for 'Bin Ladin' filed by Falcon Sporting Goods AG, a company which is also controlled by family members (first reported in this Diary last October) is still pending at OHIM. It remains to be seen whether the authorities in Alicante will eventually accept the application for publication or find grounds to refuse it.

Greenpeace oversteps the mark

ExxonMobil has obtained an interim injunction in France, preventing Greenpeace from continuing to use a version of the Esso logo in which the middle two letters were replaced by dollar signs. The doctored logo has been at the heart of a campaign that criticises the oil company's stance in relation to global warming.

On 8 July the Tribunal de Grande Instance in Paris ordered Greenpeace to cease use of the sign until a full trial of the case is heard at a later date. They were given four days to delete the offending logo from their website, failing which fines of Euros 5000 per day would be levied.

Menorah mark extinguished

The Canadian Federal Court has ordered the cancellation of a trade mark registration comprising a representation of a stylised menorah -a candelabra which is an ancient symbol for the Jewish faith. The registration had been obtained by the 'Chosen Peoples Ministry', a US organisation which attempts to persuade Jews to convert to Christianity and which tried to claim the status of a public authority under Canadian law to justify protection of its logo as an official mark.

The registration was challenged by the Canadian Jewish Congress, who criticised the original decision of the trade marks registry as being the equivalent of giving a Jewish group the exclusive right to display the cross.

Mercedes' rising stars

Could Mercedes Benz be reviewing its policy of using alpha-numeric model names? It's parent company, DaimlerChrysler AG, has filed a series of Community Trade Mark applications for marks comprising the names of stars -for example, Alamak, Corvus, Deneb, Elnath, Gienah, Homan, Lucida, Nushaba, Saidak, Sertan, Taygeta and Thuban.

It is not surprising that the proud owner of the three-pointed star logo should seek heavenly inspiration for its new marks but perhaps its rivals have beaten it to the most obviously appealing names, with their Astra, Mercury and Scorpio models. However quality always shines through so do not expect aficionados of the brand to care too much what name is stuck on the back so long as the beloved 'gunsight' is attached to the front.

TM registries get animated

Trade mark registries in countries such as the UK and New Zealand are starting to accept so-called animated marks. However, unlike the moving marks (e.g. revolving packs or BP's animated helios logo) to be found on the RioBrand database, these marks are typically represented by a series of static 'time lapse' illustrations portraying activities such as a spherical chocolate bar falling apart into individual segments or a humanoid, dancing toilet bowl which waves its arms about.

Will there be a 'sunrise' with the dawning of .eu domain names?

The new '.eu' Top Level Domain Names move ever closer and are now expected to be introduced early next year. The implementing Regulation (Regulation (EC) No 733/2002), which was adopted by the European Parliament and Council last April, has been published. Further details can be found at: http://europa.eu.int/information_society/topics/telecoms/internet/eu_domain/index_en.htm

As part of the process for introducing the names the European Commission has announced an on-line consultation and it would like to hear from those who have experiences of either registering domain names in good faith only to be accused of 'cybersquatting' or from those who have sought registration of a domain name related to their name or business only to find that it has already been 'grabbed' by another who refuses to transfer it unless an extortionate sum is paid. The questionnaire can be found at: http://europa.eu.int/yourvoice and the deadline for comments is 31 October.

The Regulation considers the possibility of a 'sunrise period' during which owners of trade marks may have priority in reserving names incorporating their marks but it does not firmly commit to provide such a system and there is speculation that a simple 'first come, first served' system may apply, right from the outset.

Tesco de-bagged by High Court

On 30 July the Levi's versus Tesco case involving parallel imports (grey goods) returned to the English High Court for further consideration following the interpretation and guidance provided by the European Court of Justice. As expected, the judge held that the plaintiff's rights were not exhausted in relation to goods imported from outside of the European Economic Area and that without the trade mark owner's consent such trade was an infringement. However, Tesco were given leave to appeal the decision.

Monday mourning for consultants

With the benefit of hindsight, the decision of the spun-off consulting arm of Arthur Andersen to rebrand itself as Accenture was a wise move and it served to limit the damage caused when the auditing business was beset by problems in the wake of the Enron collapse. Now other firms of consultants have decided to seek out new names.

PWC Consulting has finally decided to adopt a completely new name. The firm's original, lengthy name, PriceWaterhouseCoopers was quite a mouthful so some City wags quickly shortened it to Poopers. When it moved to use its initials it found that a Hong Kong-based business had beaten it to the domain name 'pwc.com' and its complaint to WIPO, attempting to win the name via the ICANN dispute procedure, was unsuccessful. It has now decided to call itself Monday, based on advice provided by branding consultants Wolff Olins -responsible for other innovative names such as Goldfish, O2 and Orange. The decision has brought much critical comment, including the nickname 'Mundane' being used in some quarters and a threat of litigation by another business which claims to have been using the name for two years.

Deloitte Consulting seems to be having better luck with the name that it has chosen for the consulting unit that it is spinning off from its parent auditing firm. It decided to utilise the name Braxton, a mark that it has owned since 1984, when it acquired the international management consultancy Braxton Associates. The name was the most popular suggestion made by staff when their suggestions were sought and it stood up well in international linguistic testing and other analysis carried out by Interbrand. In what is seen as a dig at rivals' names such as those mentioned above, the firm's CEO Doug McCracken said 'It's real, it's easily memorable and it has the stature expected of one of the world's largest consulting firms. It is a timeless name that will work for us now and in the future. While our competitors are distancing themselves from their consulting roots, we are reaffirming our commitment to the profession.'

Consignia - return to sender

Only 15 months after it decided to rebrand itself the UK Post Office has decided to abandon its controversial new name 'Consignia' and instead return to using 'The Royal Mail'. The decision is said to be partly intended to raise staff morale, as widespread criticism has taken its toll on the workforce during this period when the business has also suffered huge financial losses and a cost-cutting programme involving heavy redundancies.

...and finally

These days many fan clubs operate a website which utilises the name of the celebrity to whom they are devoted. However the object of their affection sometimes fails to appreciate such attention. In recent weeks two fan sites have been on the receiving end of complaints about their domain names, with very different results.

Van Morrison was not flattered to find that the Unofficial Club De Van Morrison based in the Netherlands Antilles was using the domain name vanmorrison.com. The singer-songwriter filed a complaint under the ICANN Uniform Domain Name Dispute Resolution Policy but the registrant failed to file a response. The single Panellist cited the earlier case involving Madonna in which it was held that "use which intentionally trades on the fame of another cannot constitute a 'bona fide' offering of goods and service" and he ordered that the name be transferred to Van the Man.

In contrast, Hanna-Barbera Productions failed to convince Nominet's appointed Expert that the domain name scoobydoo.co.uk should be handed over to them. The British registrant of the offending domain name operated a website which offered fans of the TV cartoon series the chance to obtain e-mail addresses in the form 'name@mailbox.scoobydoo.co.uk' and also offered a range of Scooby-Doo merchandise. However the latter activity was discontinued prior to the hearing of the Complaint and a disclaimer was added making clear the unofficial nature of the site. The registrant was helped by Paragraph 4b of the Nominet UK Dispute Resolution Service, which provides that in certain circumstances a site operating solely in tribute to a person or business may be considered fair use of a domain name that is identical to the name of its object. However Hanna-Barbera must be tempted to use a quote from the show: 'Those pesky kids….'

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