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Tuesday, 11 December 2007

Quis custodes custodiet?

This is too good to save till Friday, says the IPKat, who thanks fellow blogger Peter Groves for sending it to him. Designer Hannah McHalick is suing the Kent Police for allegedly copying a slogan from her baby clothes range for an online shop. The police are apparently selling baby clothes bearing the slogan "I've Been Inside For Nine Months".

Ms McHalick says the slogan is a rip-off from her product range, which includes black-and-white convict-style baby grows, bibs, T-shirts and hoodies with the slogan "Been inside for nine months". The police deny infringement, maintaining that their product range is different because they have added the word "I've" before Ms McHalick's slogan.

The IPKat is most amused. He doubts whether the words "Been inside for nine months" are an original literary work in their own right. He also fails to see how, if that slogan were an original literary work, the addition of the word "I've" would make any difference to the question of unlawful reproduction -- which all goes to show that the criminal enforcement agencies could probably do with a refresher course on their IP law. Merpel says, let's say it's a trade mark matter: the slogan would either be descriptive (for babies that go to their full term) or deceptive (for those born early) -- and would the relevant consumers regard the slogan as an indication of the origin of the goods? But there's always passing off ...

6 comments:

Anonymous said...

Agreed Jeremy. Not a literary work; not a registrable TM (see the UK's famous T-Shirt practice, where we refuse marks which could be decorative statements by or about the wearer). Passing Off -last refuge surely ?

Re - the T -Shirt Practice. This may be tested in a forthcoming appeal on the mark: "There ain't no "f" in justice". Geddit ?

Anonymous said...

I should also have pointed out the flaw in Merpel's reasoning. The goods/services are not "babies" and therefore the mark cannot be descriptive or deceptive !

Does anyone know where "babies" would be classified under Nice ?

Anonymous said...

Merpel's right. The words are descriptive of the intended purpose of the goods, which is that they are to be worn by babies who have been incubated for the normal nine-month period.

Anonymous said...

Respectfully I think you're wrong there. You're using the characteristics of the supposed wearer to found the (descriptiveness )objection.

I'd love to know if you've got case law to back up your proposition.

I do think 'intended purpose' is one of the hardest characteristics under section 3(1)(c) (UK Act) to apply, but in my view it has to be directly applicable to the goods.

Anonymous said...

OHIM refused BROADBAND USER for goods and services in classes 9, 16, 35 and 41 - though the sign described the intended user (= "intended wearer").

Anonymous said...

The UK would likewise refuse BROADBAND USER in those classes. But it would not be on descriptiveness grounds but non-distinctiveness grounds - ie purely a decorative statement about the wearer.

Permit me a little rant at this point Jeremy.

You would have thought that after 13 years of 'partial harmonisation' in trade marks, people would know, and consistently apply, an objection based upon "descriptiveness".

As is clear from this exchange (and incidentally from the discussion in a recent appeal decision in the UK which has seemingly passed unnoticed (Friction Management Solutions)), this is far from the case.

Still, we do not know where exactly the boundary lies between decsription and non-distinctiveness.

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