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Tuesday, 17 August 2004

POSTER POSER

The IPKat brings you news of an interesting UK Trade Mark Registry decision. The band Linkin Park applied to register LINKIN PARK as a trade mark for printed matter, posters and poster books in Class 16. Objections were raised based on lack of distinctiveness under s.3(1)(b) of the Trade Marks Act 1994. It was also argued that the mark designated a characteristic of the goods, viz, the band featured in the posters. Linkin Park argued that, following the ECJ’s ruling in Arsenal v Reed, the registration of a distinctive mark is legitimated wherever the mark owner can be expected to profit from the use of the mark on such goods or in connection with such services and to suffer economic detriment if such use by others was permitted.

The application was refused on both grounds of objection:

* The mark was excluded from registration under s.3(1)(c) of the TMA since it designated a characteristic of the goods. Following Advocate General Jacobs’ Opinion in OHIM v Zapf creation it could be said that the particular purchasers purchased particular posters because the name LINKIN PARK represented the band who produced music to which the purchaser enjoyed listening. The name LINKIN PARK appearing on the posters was the subject matter of the goods which was an essential characteristic of such goods. However, the same was not true of the ARSENAL name when used in relation to articles of clothing.
* The Court of Appeal’s Arsenal v Reed judgment was not relevant because that was an infringement action postulated on the footing that the ARSENAL trade mark was validly registered. Although the validity of the registration of ARSENAL for scarves and shirts had been discussed in the High Court, this did not mean that ARSENAL could be validly registered for posters and poster books.
* There was likely to be a wide demand for posters bearing the name LINKIN PARK since it was the name of a well known band with an established following in the UK. Third parties could legitimately enter such a trade. Third parties can legitimately take photographs of celebrities and will own the copyright in those pictures. It was essential for those parties to be able to use the LINKIN PARK name in order to trade in the pictures in the form of posters.
* Additionally, the mark was not distinctive for the purposes of s.3(1)(b) TMA since the average consumer would not see the mark as indicating trade origin as it was common practice for third parties to market and trade in posters and poster books which carry the name of a music band. LINKIN PARK was not distinctive enough as a combination to bestow distinctiveness on the mark as a whole in order to distinguish Linkin Park’s goods from those of other traders.

The IPKat can’t say he’s surprised by this decision. There’s a proud history in the UK of deciding that consumers will not perceive memorabilia as originating with the person or organisation that it commemorated by it. This is self-perpetuating since if “unauthorised” uses continue to be allowed then consumers will assume that authorisation is unnecessary for memorabilia to come on to the market. Linkin Park can’t have been helped here by their representative’s enormously wide reading of Arsenal v Reed.

Linking parks here, here and here
Lincoln Park here and here

7 comments:

Jeremy said...

Basically, are we saying this:
(i) If a band chooses an arbitrary name (for example LINKIN PARK) and seeks to register it for goods and services before it actually uses its name, the name will be registered because consumers won't associate it with a characteristic of the band, whereas (ii) if the band plays under that name and then seeks to register it as a trade mark, the name -- through its use in relation with the band -- is taken to be descriptive of it and no registration will ensue?

Ilanah said...

I don't think so. This was a very specific case that was deliberately limited to posters and poster books. Objections to a lot of the other goods applied for under the same mark were not pursued.

Jeremy said...

But my point remains: Linkin Park would have been able to register LINKIN PARK even for posters and books if nobody knew about them. Surely it makes better sense to say yes, they can register the mark, since Article 6(1) of Directive 89/104 will still allow honest descriptive and denominative uses of that mark by third parties.

Ilanah said...

1. But we don't take defences into account when determining registrability.
2. Who'd buy the posters if no one knew about them :-)

Jeremy said...

As to 1, there's no need to consider Art.6(1) defences anyway when the appplicant's mark is arbitrary and inherently distinctive for the goods the applicant's trying to register it for.
As to 2, if there were any logic in your witticism, people wouldn't bother applying to register trade marks until they had proved them to be commercially successful.

Luca QM IP LLM said...

Hi there, here is Luca QM IP LLM "Under pressure"

Eminem has registered his name as trademark for entertaiment and clothing, and no one would object if he marketed books with such trademark , (provided you accept his book as "entertainment"...). Linkin Park could have done the same thing , since WETWETWET is not applicable to their case: they wanted to market books under the TM "LinkinPark".... quite silly, they could market the book under the trade mark of their publishing company bearing "Linkin Park" as description of the content of the medium carrier "the book".

Jeremy said...

Hi there Luca, it's good to know you're still reading the IPKat despite pressure of exams.
Don't forget that, even if a band's name isn't immediately registrable for specific classes of merchandise, it will still be able to acquire distinctiveness through use. Before that time, the band may be protected by the law of passing off (or, in civil jurisdictions, unfair competition).

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