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.

Wednesday, 8 May 2013

Golden Balls and trade mark bullies: a timely update

Is there such a thing as a "trade mark bully"? The issue of trade mark bullying featured on the International Trademark Association Meeting's programme this year as a Monday afternoon session in which, regrettably, the only participants were drawn from the United States -- a jurisdiction in which, it appears, bullying is perceived as a remote theoretical possibility and as an issue of professional ethics rather than commercial survival for small brand-owners. According to the programme:

"The concept of “trademark bullying” has been a hot topic recently and complaints of overly aggressive intellectual property enforcement are not new. But recently, legislation has been proposed to curb trademark bullying and the USPTO [that's the United States Patent and Trademark Office] (with INTA’s participation) has issued a report on the perceptions within the trademark community about the issue.

This panel of in-house and outside counsel will delve into the ethics of the issue and will examine the interplay between trademark bullying and professional responsibility rules. Speakers will look at the applicable bodies of ethics law and attempt to answer the question of when zealous representation crosses the line into unethical conduct".
If this hot topic was erupting when the programme was printed, its volcanic lava had turned to pumice stone by the time we got to Dallas.  Trade mark attorney Ron Coleman tweeted on an apparent mismatch of expectation and interest: this session was allocated one of the largest conference rooms available, but it was 75% empty. He added: "Balanced presentation at #TMbullying session despite inability to find an actual example of bullying ...".  Then, tweeting in his blog persona of @likely2confuse, Ron added: "Panel on #TMbullying over early. No one had a question for the panel".

This Kat dearly wishes that he had been there since, together with some of his readers, he has been working to help some of the victims of trade mark bullying on his side of the Atlantic, one instance of which fortuitously hit the headlines this very week.

Inez and Gus, outside their old shop,
display their merchandise
Over the years, readers of this weblog will have become familiar with the David-and-Goliath battle between katfriends and truly excellent people Gus and Inez Bodur, on the one side, and the mighty owners of the Ballon d'Or trade mark on the other (a selection of earlier posts involving Gus and Inez can be found here). While things may seem to have gone a bit quiet lately, there has been much activity behind the scenes.  As the Ham&High [real name: Hampstead and Highgate Express] reports:
"A couple locked in a five-year legal battle with the organisers of one of the world’s most prestigious football awards have taken their fight to use the trademark Golden Balls to Europe’s highest court.

Inez and Gus Bodur, who run sportswear brand Golden Balls, have spent the last five years defending the company’s trademark after the FIFA Ballon d’Or – a globally-recognised football award given to the planet’s best footballers – claimed Golden Balls infringed their copyright [explanatory note: it is a well-established tradition, almost bordering on a legal duty, for British journalists to confuse trade marks and copyright at least once in every published news item].

On Tuesday, the couple, both aged 49, flew to Luxembourg for a hearing at the Court of Justice of the European Union [The hearing was before the General Court. There remains the option of an appeal to the Court of Justice itself].

From Inez: a peck for Beck
Mr Bodur, who was forced to close the Golden Balls store in West End Lane, West Hampstead, in 2010 because of the costs of fighting the case, said: “The bottom line is that Ballon d’Or translates as ball of gold or balloon of gold – that is a direct translation. Golden Balls is plural and there is no similarity. There is absolutely no confusion to be made.”
The Bodurs, who live off Hendon Way, in Cricklewood, with their two children, obtained the trademark Golden Balls in 2001 and have sold sportswear using the brand ever since. Golden Balls clothing quickly took off and in 2002 film star Gwyneth Paltrow was spotted in Covent Garden wearing one of the brand’s T-shirts. After Victoria Beckham’s revelation that her nickname for husband David was “Golden Balls”, the Bodurs were quick to get in contact with the Beckhams. Said Mrs Bodur:
“Gus’s initials are GB and I also used to call him Golden Balls. It was just a joke between us and that was where the company name came from. We wrote to the Beckhams ages ago when it was revealed that it was David’s nickname and we have never had any legal issues with them.”
But in 2007 the couple were contacted by representatives of Ballon d’Or, an annual award given to one player considered the best in the world in the previous season, accusing them of infringing the award’s copyright and demanding they abandon Golden Balls altogether....
Fighting the case has cost the Bodurs around £100,000 [This is not a typo, says the IPKat, who would dearly like to know where all that money went ...], which they have funded from a 2007 deal to license their brand to entertainment company Endemol for the Golden Balls game show hosted by Jasper Carrott.
They won their original case against Ballon d’Or in OHIM, the European Union (EU) trademark disputes court [er, that's not quite what OHIM is, but never mind], in 2010.

But after a subsequent appeal OHIM handed Ballon d’Or trademark rights for a number of sectors in Europe, including television rights. ...

The couple expect a decision to be made by the court in July."
The last word naturally goes to Inez:
“We weren’t going to walk away and be bullied just because they have more money than us. If we do win this I would like to see the laws changed so that if small businesses are being bullied by large corporations they can get help with legal aid.”
Merpel isn't convinced that the provision of legal aid is the answer, since he worries that bullies might feel even more inclined to do their bullying if they feel that their victims -- whom they will still bully -- will have at least a cushion of comfort in the form of some public funding for their litigation costs. He is more inclined to the opinion that really vigorous pre-trial case management, seeking to steer the bully and his victim towards a negotiated settlement based on realistic commercial considerations, may be at least part of the solution.

This Kat just hopes that, next time trade mark bullying is on the programme, there will be at least one speaker who can relate at first-hand what it feels like to be bullied.  If INTA cares to get in touch, he can provide the organisation with the names and contact details of several intelligent, articulate souls who own their own trade marks and have been at the receiving end of some robust bullying. They too are part of the trade mark community though, like tens of thousands of their peers, they can afford neither the cash nor the time to join and participate in organisations such as the INTA.

Historical footnote: this is not the only occasion on which the Bodurs have faced some robust bullying.  Click here to find out who tried to bully them out of their figurative trade mark bearing the legend "Gussy the Ice Cream Van", depicted on the right.

2 comments:

BrandGeek said...

Great coverage of an event both of us wishes we'd gotten to attend. It's not just British journalists who are obliged to mixup trademarks and copyrights, U.S. journalists are under the same obligations and sometimes even throw in patent references too for good measure. I have been working with a small group of U.S. attorneys to define and examine trademark bullying. We hope to combine forces with the folks who just launched trademark bullying.com.

BrandGeek said...

Great coverage of an event we both wish we'd gotten to attend. I have been working with a small group of attorneys here to define and provide examples of what is --and is not -- trademark bullying. We hope to collaborate with the folks that just launched trademarkbullying.com. By the way, using trademarks and copyrights interchangeably is not only obligatory in the UK, but here ins the states as well, and our mainstream media even throws in patents on occasion for good measure.

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