Australian keyword troubles
The Age reports that Australia may hear its first keyword advertising case. It appears that telephone company APPT has purchased the trade mark of its rival Telestra as an advertising keyword as part of Google’s ‘AdWords’ scheme. As a result, a search for ‘telestra’ would, until recently, bring up APPT as a result. Telestra has now ceased the practice and claims that it had no knowledge of it, blaming its advertising agency.
The IPKat notes that the article does not say that a case is to be brought, merely that APPT has been informed of the facts and is not happy.
Utensils by appointment?
On 12 April the UK Patent Office issued a collection of new Practice Amendment Notices. Four merely clarify the practice, but do not change it. These are:
5/06 Wide and Vague specifications
4/06 The names of the Royal Family
3/06 Examples of marks considered to be objectionable under Section 3(3)(a).
2/06 Colour Trade Marks
4/06 is the IPKat’s personal favourite. Listed therein are the identities of individuals whom the Queen regards as members of the Royal Family and which should not be registered as trade marks by third parties under s.3(5).
Her Majesty The QueenPerhaps some eager HELLO! reader could inform the IPKat if there are any glaring omissions.
His Royal Highness The Duke of Edinburgh
Their Royal Highnesses The Prince of Wales and The Duchess of Cornwall
His Royal Highness The Prince William of Wales
His Royal Highness The Prince Henry of Wales
His Royal Highness The Duke of York
Her Royal Highness Princess Beatrice of York
Her Royal Highness Princess Eugenie of York
Their Royal Highnesses The Earl and Countess of Wessex
The Lady Louise Mountbatten-Windsor
Her Royal Highness The Princess Royal and Rear Admiral Timothy Laurence
Mr Peter Phillips
Miss Zara Phillips
The Viscount and Viscountess Linley
The Honourable Charles Armstrong-Jones
The Honourable Margarita Armstrong-Jones
The Lady Sarah Chatto and Mr. Daniel Chatto
Mr. Samuel Chatto
Mr Arthur Chatto
Their Royal Highnesses The Duke and Duchess of Gloucester
Their Royal Highnesses The Duke and Duchess of Kent
Their Royal Highnesses Prince and Princess Michael of Kent
Her Royal Highness Princess Alexandra, the Honourable Lady Ogilvy
The Duchess of York
PAN 6/06 is a change of practice. It deals with evidence of distinctive character acquired through use. In particular this recognises the effect of the ECJ rulings in Philips and HAVE A BREAK. Of interest is the assumption that a mark must be used as a trade mark in order to acquire distinctive character. A key statement is:
The less plausible it appears on the face of it that consumers would take the mark in question as serving a trade mark function the more important it is to consider what, if anything, the proprietor has done to nurture the mark into a trade mark. Or to put it another way, the more descriptive or non-distinctive the mark appears, the more work the proprietor will have to put in to educate consumers that it is a trade mark. Where the mark has been used on a substantial scale as the sole or principal means of identifying the trade source of the goods it will often be quite easy to conclude from the context of the use that the public have been educated to see the mark as a trade mark.The IPKat isn’t entirely happy about this. It appears that the Patent Office is concentrating on the intentions and efforts of the trade mark owner, rather than looking at the end result in terms of consumer perception. Granted the two will often coincide but it isn’t safe to assume that this will always be the case since trade marks sometimes take on a life of their own independent of their owners’ intentions.