For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Monday, 17 January 2011

Lammy double whammy

Left to right: Lavinia Carey (British Video Association),
IPKat team member Jeremy and ex-IP Minister David Lammy MP
To refresh the memories of the IPKat's readers, the photo above was taken at the All Party Parliamentary IP Group reception at the Dining Room of the House of Commons in London's Houses of Parliament.  Former Intellectual Property Minister David Lammy MP has evidently riveted the attention of his audience -- but what this photo needs more than a ministerial presence is a brilliant and incisive caption.

There's a competition attached to this.  The author of the best caption gets complimentary registration to attend IBC Legal Conferences' 19th Annual Biotech and Pharmaceutical Patent Conference in Munich, Germany (programme here).

The entries were many, but the quality was not of the uniformly high standard we've come to expect.  Also, some of the entrants interpreted the word "caption" to mean "rude rant against the former Minister" or "philosophical disquisition on the meaning of life, with special relation to the environment".  For these entries there could be no redemption. Nonetheless there were some tolerable efforts, including a batch from the creative Tweeter Matthew Taylor:
* "Having heard Mr. Lammy's pitch before, Jeremy mind wandered. Would he'd suit those glasses? If only he could make out the brand ..."

* "Suddenly, over the man's right shoulder, Professor Phillips spotted the real David Lammy entering the room. He'd been taken in by a convincing counterfeit."

* "Anyway, the salesman assures me that barcoding everyone will dramatically reduce IP theft. Or terrorism. It was one or the other."

* "Then I said, no, it's already registered for retail services in Class 35!  Er ... I guess you had to be there."
From other, non-multiple competitors we received (among others) the following:
* "Are you seriously suggesting that videos -- and photos -- of Kats should attract indefinite copyright protection?" (Eric Wolff)

* " - but I saw it in ASDA!" (George Brock-Nannestad)

* "Yes, I know that it is instant, but it tastes like it is fresh brewed!" (Paul Hickman)

* "Thrice the brinded Kat hath mew'd …" (Michael Factor)
Of these, the IPKat likes Matthew Taylor's "Suddenly, over the man's right shoulder, Professor Phillips spotted the real David Lammy entering the room. He'd been taken in by a convincing counterfeit" best, so he's the winner.  Well done, Matthew -- get in touch so that your registration details can be sorted out.


Now for Part II of the Lammy double whammy: several readers forwarded links to this feature in the Guardian on the former Minister's latest utterance on the future of his beloved Tottenham Hotspur Football Club.  First to send it in was (soon-to-be-relegated?) West Ham supporter and veteran trade mark guru Bob Boad, with Aaron Wood a respectable second. Anyway, the Kat is going to run this version of the story, as told by neophyte Class 46 contributor, fellow INTA IP Twist fledgling blogger and sweet soul Niamh Hall:
"Tottenham Hotspur are to be renamed Stratford Hotspur, at least if the former IP minister David Lammy MP gets his way!  For those who haven’t been following the sports gossip pages, Tottenham Hotspur ('Spurs' to their fans) and West Ham are in a battle to see who gets to use the site of the Olympic stadium in London, located in Stratford, after the 2012 Olympics finish. 
Trade mark under threat? Chelsea FC
plays not in Chelsea but Fulham ...
Spurs’ trade mark registrations are under threat if they succeed in their bid for the Olympic Park, on the basis that the trade mark TOTTENHAM HOTSPUR will become misleading or deceptive as they will no longer be based in Tottenham. Even their long history of use will not assist them, as the "get out of jail free" card of acquired distinctiveness does not apply to these grounds of challenge. [Hold on, says the Kat -- I thought we were talking about trade marks, not geographical indications! The trade mark's function doesn't depend on the location of the team. When Newcastle Brown beer was no longer brewed in Newcastle it lost its GI, but its trade mark's just fine] This makes me wonder what other defences might be available – if all of their fans (who presumably make up the majority of the market for their goods and services) know about the move, is the relevant public likely to be deceived? Would new fans assume they are still based in the borough of Tottenham if they keep the name? Perhaps it might be understood as a reference to their historical connection only? 
If Spurs have to change their name, they are likely to want to keep some element of the name so they may follow the example of Wimbledon F.C., who became MK Dons when they moved to Milton Keynes. Perhaps Spurs on its own? London Hotspur? I like Olympic Hotspur (it sounds very heroic!) but I doubt the Olympic Council would agree with me. 
... while Fulham FC play
not in Fulham but Putney
If this move goes ahead, it could open a can of legal worms. Alexander Carter-Silk, head of intellectual property and technology at the law firm Speechly Bircham, raised the spectre in the Guardian article of an extended passing off action against continued use of the name, aside from any TM registration issues [The Kat assumes that Alexander was having a little joke at the expense of the peculiar laws which govern this area of IP]. In Ireland, the Consumer Protection Act 2007 could give aggrieved consumers a right of action in damages for a misleading commercial practice and perhaps something similar might apply in the UK as an alternative basis for an action? 
Aside from Mr. Lammy and the residents of Tottenham, who are keen to keep the word 'Tottenham' free for the exclusive use of a new local team, I expect that an action might come from West Ham, who have already threatened the Premier League with judicial review if they lose out to Spurs in the decision, which is due on 28 January."

6 comments:

Anonymous said...

So if Arsenal no longer plays at Woolwich, have they been playing trademarkless for all these years?

Anonymous said...

Putney Bridge might be the nearest tube, but Fulham FC are very much on the Fulham side of the river.

Anonymous said...

Likewise, the "Boleyn" ground where West Ham have been based since 1904 is actually in what used to be East Ham until the county boroughs of East and West Ham were merged in the 1960's.

Anonymous said...

The original suggestion in the Guardian is complete nonsense (as the Kats point out).

Other teams in trouble would include Manchester United, who play in Salford - see the 'Welcome to Manchester' taunts when Carlos Tevez signed for Manchester City: http://www.telegraph.co.uk/sport/football/teams/manchester-city/5857213/Manchester-City-taunt-Manchester-United-with-Carlos-Tevez-welcome-poster.html.

Is their trade mark deceptive? Of course not.

AFC Wimbledon, mentioned in the piece, play in Kingston. The old Wimbledon FC spent 12 years playing at Crystal Palace's current ground (which is in Norwood, and about 2 miles from Crystal Palace).

Fulham, while they do not play in Putney (the Thames runs between Craven Cottage and Putney), did spend years at Queen's Park Ranger's ground (which again, is in Shepard's Bush, not in Queen's Park).

The list could go on and on.

Anonymous said...

On a similar note, do people think that Decker's UGG AUSTRALIA mark could be revoked on the basis that it is deceptive, since their boots are made in China?

Anonymous said...

I think that it might be illuminating to look at the following case:
http://www.ipo.gov.uk/types/tm/t-os/t-find/t-challenge-decision-results/o02403.pdf

This case concluded that in relation to various classes of goods and services (including "Education; providing of training; entertainment; all related to sports; sporting and
cultural activities; all relating to Tottenham Hotspur Football Club") the mark TOTTENHAM was NOT descriptive of the area. The specification is a little circular, but it begs the question.. how can the use be deceptive if the mark isn't descriptive.

As for the question of passing off, I think with respect Alexander is a long way far of the mark - perhaps in Tottenham whilst the law is in Stratford. The goodwill in the club is almost certainly owned by Tottenham Hotspur Plc, and I would anticipate that even if a new company were established the goodwill would be assigned.

perhaps a new slogan for THFC's brand of football... "Made in Tottenham, played in Stratford"

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