For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

Two of our regular Kats are currently on blogging sabbaticals. They are David Brophy and Catherine Lee.

Friday, 21 September 2012

How are catchphrases protected? Just like that

Cat of the Match
'Man of the match', the famous phrase that denotes the most outstanding player in a particular game, was sold by the OFS Group Ltd at auction this afternoon (Thursday 20th September). The company had managed to amass quite a dizzying array of rights across the world since its first registration of the phrase in 2002: two successful applications for Community Trade Marks via OHIM and a WIPO Trade Mark, all in classes 9, 16, 38 and 41, as well as ownership of the website address motm.com (according to Sky News, although when searched for in Google there is a link to EMM - a Chicago-based-all-things-you-could-ever-want-for-a-party site).

Although a catchphrase is capable of trademark and copyright protection, this Kat suspects that enforcing such rights is no mean feat. Apart from the difficulty in justifying that a phrase is worthy of such protection, the collection of royalties for use would surely be a random process of first seen/heard first the defendant in infringement proceedings. Further, some words seem to mean a lot to some members of the public who do not want to see certain phrases become property. For example, the Keep Calm Campaign is seeking signatures in an attempt to challenge the OHIM's registration of the word mark 'KEEP CALM AND CARRY ON', a Second World War slogan used by the British to motivate its citizens, granted in 2011 (the use of shouty capital letters goes a long way to demonstrating how the meaning of a phrase changes over time).

The life of an IPKat is always intense serene
It appears that there has been partial success in the campaigners' cause, with registration cancellation pending based on invalidity for the word mark in classes 6, 14, 18, 20, 21, 24 and 25. Although the application for the word mark in classes 11 (Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes), 22 (Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials) and 29 (Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats) is currently the subject of opposition proceedings (see the OHIM database for more information), on the grounds, inter alia (well, assumed, inter alia), that the applicant had no proprietary right to use the sign contrary to article 8(4), Reg (EC) No 207/2009.

The case should be an interesting one. Can the IPKat readers mews as to the chances of a finding of invalidity?

The IPKat, keeping calm and carrying on, since the dispute began here.

2 comments:

Dr Michael Factor said...

Joseph Heller clearly created the phrase Catch 22 which has received a lot of recognition. It may be copyright protected and may be registerable as a trademark. I don't think one can stop third parties referring to some situation as Catch 22, despite it being dilution.

At best, Heller could stop someone from writing a book called Catch 22.

keep calm and carry on sounds like a good mark for airport security at hand luggage check in...

Andy J said...

"At best, Heller could stop someone from writing a book called Catch 22."

Well he would need to do so from another jurisdiction since he died in 1999.

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