Full Beam: the Riobrand diary

06 January 2003

• Unholy row over mints with holes
• No sweetness in the ice cream business
• Alberta Hot Rods drive off with Einstein name
• Arsenal's short-lived triumph
• Domain name retained – at Her Majesty's Displeasure
• The sky's not the limit for copyright case
• Countering the counterfeiters
• Home-grown brands thriving
• ...and finally
  

Unholy row over mints with holes

The UK Trade Marks Registry has just decided a series of oppositions which revolved around rival claims to circular sweets (candy), all of which had a central hole. Nestle had applied to register a plain version of the annular shape associated with its well known 'POLO' brand but the applications encountered oppositions by rival confectionery manufacturers Kraft and Mars. Kraft and Swizzels Matlow had also filed applications for their own circular mints bearing respectively the brand names LIFE SAVERS and NAVY MINTS but in both cases oppositions were filed by Nestle.

Mike Knight was the senior Hearing Officer who heard all of the cases and he had to decide if there was a true 'Lord of the Rings'. He rejected both of Nestle's oppositions but they had the consolation that the oppositions filed against both of their own applications were also rejected, subject to them limiting the colour and size of the mark covered by their application and restricting the specification to 'mint flavoured compressed confectionery'.

No sweetness in the ice cream business

Relations are also chilly in the ice cream sector where Nestle have been opposing Unilever's applications to register two slightly different 3-dimensional shape marks relating to their Vienetta dessert. Before the UK Trade Mark Registry one opposition was upheld and the other was refused. The parties appealed to the High Court where on 18 December Mr Justice Jacob refused one application and whilst making critical comments of the other decided to refer to the ECJ questions relating to the appropriate test for acquired distinctiveness. The case looks set to clarify the rules for registrability of three-dimensional shape marks and answer some of the questions left unanswered by last year's ruling by the ECJ in the Philips and Remington dispute.

Alberta Hot Rods drive off with Einstein name

A battle for ownership of the domain name 'alberteinstein.com' has resulted in a surprising defeat for The Hebrew University of Jerusalem. Dr Einstein bequeathed most of his property and rights to the University, including the valuable right to control the use of his name or likeness. The University operates a website at www.albert-einstein.net where information about the famous scientist can be found but it objected to the registration and use of the disputed 'dotcom' name by Alberta Hot Rods of Canada.

Alberta -who have been involved in other domain name disputes- had been using the name for an information section about the scientist on their Celebrity 1000 fan website network and a prominent disclaimer on the site made it clear that there was no official endorsement of the content. The ICANN Panel noted that Dr Einstein had not used his name for commercial purposes during his lifetime and that his name had not become established as a trade mark. The Panel also felt that internauts were not being misleadingly diverted, taking into account the likely expectations when the celebrity concerned had been long dead and had not been associated with the supply of goods and services. They therefore decided not to order the transfer of the name.

Arsenal's short-lived triumph

The European Court of Justice was believed to have given a huge boost to sports clubs, pop stars and others involved in merchandising with its 12 November decision in the Arsenal case. Its judgment in relation to the questions referred by the UK High Court confirmed that the function of a trade mark is to guarantee the origin of goods and it rejected the defence that it is not an infringement to use marks as 'badges of loyalty, support or affiliation'.

However when the case then came back before the UK courts for final resolution Mr Justice Laddie accused the ECJ of exceeding its authority by deciding an issue of fact rather than carrying out its correct role of interpreting the Harmonisation Directive. He said their role was to interpret the legislation and not to decide how it should be applied in a particular case. He upheld his April 2001 decision permitting the defendant, Matthew Reed, to continue selling merchandise bearing the Arsenal name. The case is now expected to be taken to the English Court of Appeal but meanwhile Mr Reed is enjoying some unexpected 'extra time' and may continue selling his Arsenal merchandise.

Domain name retained – at Her Majesty's Displeasure

An extraordinary domain name dispute, which was described as 'misconceived' by the WIPO panel hearing the case, has resulted in Queen Elizabeth II being branded a reverse domain name hijacker. Acting in her role as Head of State for New Zealand in an attempt to wrest ownership of 'newzealand.com' from its US owners, Her Majesty's Complaint failed to impress the three panellists. The lack of any trade mark rights in the country name was considered fatal to the Complaint and allegations that the domain name was registered in bad faith were also rejected

The sky's not the limit for copyright case

The Chicago Cubs baseball team has issued proceedings against ten different 'rooftop operators' who use high-rise buildings with a view of the team's Wrigley Field to host entertainment packages that combine live TV broadcasts of games with food and drink hospitality. The Cubs allege that the defendants are 'free riders' who are unfairly misappropriating property, violating the Lanham Act, infringing copyright and enjoying unjust enrichment. The case is due to be heard by the District Court for the Northern District of Illinois.

Countering the counterfeiters

Counterfeiters in the UK received a rough ride in the run up to Christmas. Normally the festive season is a time of happy hunting for sellers of fake merchandise but this year anti-counterfeiting organisations have been especially active.

One who has been on the receiving end of the clampdown is Allen Watts from Norfolk who has been jailed for almost four years for his role in a huge video counterfeiting operation. The judge who sentenced him described him as a man of remarkable arrogance who having been released on bail for one offence was subsequently apprehended at premises where more counterfeit videos were being produced.

Another who has not had a happy Yuletide is Derrick Davies who is part way through a four-year sentence for counterfeiting. He now faces having his sentence doubled unless during the next six months he pays £355,000 in reparation because a court has decided that his luxury home in the UK and his Spanish villa were purchased with the proceeds of crime.

Home-grown brands thriving

Our usual focus on new 'do-it-yourself' corporate names confirms that the trend continues to enjoy healthy support. Firstly, KPMG Consulting decided to ask its 16.000 employees for suggestions for a new name and ended up with over 500 names from which it chose 'Bearing Point' as the best candidate. We can only guess at what the others might be. Then Sir Stanley Kalms, former Chairman of UK electronics retailer Dixons, and his partners in a new funds management venture looked to their schoolboy Latin to come up with 'Volvere' (meaning to turn around) and further deprive the trade mark creation consultants of the chance to earn a crust.

...and finally

Some established brands have found themselves on the receiving end of some unseasonal flak.

Firstly, comes news of Ariel getting a poor reception in Egypt. Procter & Gamble, which for years has been battling to bury unfounded allegations that its Man in the Moon logo is indicative of devil worship, now has an unexpected problem with this leading brand name. The company maintains that its detergent is named after a character in Shakespeare's play The Tempest and it has been marketed under the name since the 1920's but the Egyptian Committee for Boycott claims the product is named after Israeli Prime Minister Ariel Sharon and has banned its sale. The Committee is also reported to consider the brand's 'atom orbit' logo to be a modified Star of David.

The Snapple subsidiary of Cadbury Schweppes is another business whose PR office has been working hard to correct misunderstandings arising from one of its brand names. The unfortunately named drink 'Bali Blast' was a big seller in the past and although production has been discontinued some old stock still appears to be available in certain markets. The company has received a few complaints that the name is leaving a bad taste but it is difficult to see what more they can do and they are simply another innocent victim affected, albeit in a small way, by the fallout from the terrorist outrage.

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