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.

Thursday, 14 February 2013

When trade mark litigation will cost you Deer

When this Kat first heard the words "hoofed ruminant" this morning, he assumed that it was a rude allusion to the excellent ex-IP judge Lord Neuberger whom, he supposed, had perhaps been rebranded Lord Horseburger by a dissatisfied appellant [if you were on a planet which did not receive news of horseburgers, just key the words 'horse' and 'burger' into the news search facility of your favourite search engine -- or cut to the chase and click here for the Mirror's account of a recent 'night-mare' for leading British retailers]. However, a quick look at today's papers, both online and in the flesh, as it were, soon put him right.  Here. for example, is a sample taken from the Mail Online:
"One is instantly recognisable as the logo of Babycham sparkling perry. The other adorned Cath Kidston products at Christmas – but has left some feeling anything but festive. Babycham has launched legal proceedings against the British homeware company, claiming its use of a baby deer with a ribbon on its neck infringed the drinks firm’s rights.

The High Court writ also claims that the appearance of the logo on Cath Kidston products aimed at under-18s associates Babycham ‘with a blatant disregard for industry codes of practice to protect children’ [from alcoholic products -- or from stylised baby deer?].

The Guildford-based company behind the drink wants an injunction to stop Cath Kidston using the image (left), plus destruction of all products marked with it. But Cath Kidston denies perplexing shoppers, insisting that – although its seasonal deer image and the Babycham logo are both ‘hoofed ruminants, unaccustomed to wearing ribbons’[ditto Lord Neuberger, who has not been spotted wearing ribbons this side of the millennium] – there is no confusing similarity between the two. ...

Barrister [see readers' comments and corrections: he's actually a solicitor-advocate] David Wilkinson, for Western Wines Holdings Ltd and Accolade Wines Ltd, said in the writ: 'The claimants and their predecessors in title have, since 1953, used in relation to Babycham sparkling perry and related goods various iterations of a logo with the common theme of a baby chamois with a ribbon tied round its neck.

'Indeed Babycham was the first alcoholic brand and the second ever brand to be advertised on commercial television in the UK with a campaign in 1957. 'Cath Kidston Ltd has used and continues to use a logo in relation to its Christmas 2012 advertising campaign and range of related goods, which depicts a baby deer with a ribbon tied around its neck, which is substantially similar to the Babycham logo,' adds Mr Wilkinson:
'Their use in the course of trade of the Kidston Logo without due cause in relation to goods similar to those for which the registered marks are registered, take unfair advantage of, and is detrimental to, the distinctive character and repute of the Babycham logo,' it states. A drink, its packaging and any promotional material or activity should not in any direct or indirect way have a particular appeal to under-18s. The use of the Kidston Logo includes use on products relevant to under 18s, such as children's clothes. The application of the Kidston Logo to goods relevant to under-18s is liable to cause serious tarnishing and detriment to the repute of Babysham by associating (it) in the minds of the public and trade with a blatant disregard for industry codes of practice to protect children. 'It is denied that any of the said deer are "substantially similar" to any of the chamois. While it cannot be denied that, by nature, deer and chamois are both hoofed ruminants, unaccustomed to wearing ribbons, the differences in the manner of execution speak for themselves, not least arising out of the absence of horns and the springing "springbok" stance.'. ..."
Apologies for the most obvious but irresistible
caption to appear on this blog in 10 years:

"Bambi consults with Bird & Bird"
Personally this Kat is relieved that this litigation has not yet reached the point at which, shrieking "a plague on both your houses!", Disney joins in and claims its prior trade mark rights, copyrights, hoofed ruminant rights and goodness knows what else against both Western Wine Holdings and Cath Kidston. Everyone knows that Disney is the rightful owner of Bambi -- who goes all the way back to 1942.  Merpel's objections that there has been more than half a century's inaction on Disney's part are swept aside on the bases that (i) Bambi became an orphan when his mummy was shot [YouTube clip here; paper tissues here, here and here] and it would be cruel and inequitable to hold Bambi time-barred in respect of adverse use of the deer format while he was still a minor, and (ii) Bambi is a famous mark under the Paris Convention Article 6 bis, as conveniently interpreted by everyone who wishes to invoke it in all its mysterious ambiguity, and everyone knows that Article 6 bis trumps everything except the Olympic Games.

Make your own perry here
Make your own champagne here 
Serbian Bambi here

7 comments:

ngaffney said...

Would Disney's copyright in Bambi be regarded as an orphan work for similar reasons to those set out in i) above?

Anonymous said...

I really can't see how a roe deer can be confused with Babycham's stylised chamois. But then, the Daily Mail confused famed solicitor-advocate David Wilkinson with a barrister, so maybe people are just easily confused.

Anonymous said...

To be honest, without the word "BABYCHAM" in the first image, I would have had no idea that this chamoisesque ruminant was used as a trademark for the "drink". Do they still sell it, by the way? Would the case be different if the fawn was wrapped chocolate with a bell instead of a bow?

Full marks for the Bambi caption, BTW.

Anonymous said...

To anonymous 16:19 - I've no idea what the difference is between a roe and a chamois, but I do know this. If it walks like a duck (or in this case a deer), and it talks like a duck, then it probably is a duck. That's why, for the average consumer, the three animals shown on the ipkat post are likely to be confused with each other. It is also why a man who walks like a barrister, talks like a barrister and very possibly charges like a barrister, is likely to be mistaken for one.

Anonymous said...

I would want to see a shed load of evidence of the link in the mind of the consumer.

The case on confusion is hopeless. Presumably 17.58 is from TLT.. sorry but no-one would confuse the 3. There is conceptual similarity, but you wont win on that. You might edge it on 10(3) if you can enveugle enough people, but even if you get past the link, think about detriment and advantage... really? Are you sure? Enjoy the publicity and put it on your CV - no-one checks when you mention you appeared that you crashed and burned.

Anonymous said...

Unfortunately my office computer won’t allow me to view the champagne making method. However, I imagine part of this simple process involves moving to a specific region of France!

Anonymous said...

For the sake of clarification, please note the following.

The claimant's barrister was identified as “David Wilkinson”. Accordingly to the Bar Standards Board (BSB) site that should be “Michael David Bartholomew Wilkinson”: (https://www.barstandardsboard.org.uk/regulatory-requirements/the-barristers'-register/?ProfileID=d0a402b7ba9ac53a1201c045beec7ab4 ).
However, his Chambers’ website entry does not indicate that he does IP, and also calls him “Michael” not “David”: (http://www.18sjs.com/michael-wilkinson.html ).

A Google search identifies “David Wilkinson”, a solicitor, not a barrister, at Stevens & Bolton LLP: (http://www.legal500.com/firms/3170/offices/1240/lawyers/65429 ).

I think that the error should be corrected, so that any further confusion may be avoided.

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