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.

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Wednesday, 23 July 2014

Distasteful -- or worse? Trade mark registration, morality and public sentiment

The IPKat received earlier today an email from Alan Clarke (Clarke IP Ltd), who writes:

"You may be interested to hear of this extremely distasteful (alleged - I've not checked any facts) attempt to register trade marks for the flight numbers of the two downed Malaysian Airlines jets - the recent Ukrainian incident, and the mysterious disappearance of flight MH.370. The quote below comes from the Guardian. The alleged registrant is wasting its money if it wishes to obtain money in this way, but it can't but cause more distress to a group of people already enduring enormous suffering".
The item on the Guardian website reads as follows:
"My colleague Kate Hodal @katehodal, who is in Kuala Lumpur, has come across a macabre twist to the MH17 and MH370 disasters: A company called Seyefull Investments in Belize has filed to trademark the terms "MH17" and "MH370" so it will get paid every time either term is used in print, radio, TV or online media. She emails:
The Coconuts website reports: The company's application to register "MH17" as one of its trademarks, in fact, was filed on July 17, aka the exact same day Malaysia Airlines Flight MH17 was shot down over eastern Ukraine, killing all 298 people on board.

The application for "MH370" was made on May 2, after a more "respectful" period of time had passed since Malaysia Airlines Flight MH370 disappeared en route from Kuala Lumpur to Beijing.

The online portal continues: While the process of registering the flight numbers of crashed aircraft might be completely legit, and Seyefull Investments Ltd might actually succeed in their attempt to make money off any mention of "MH17" and "MH370", it still remains a fact that this is an ugly, opportunistic attempt at cashing in on the suffering and pain of thousands of grieving family members and millions of people worldwide - not to mention the ended lives of the hundreds of people on board both doomed jetliners."
Apart from the obviously distasteful nature of the possible use of the reported applications as trade marks, says the IPKat, there's a question as to whether a trade mark attorney, asked by a client to register such a mark, should simply execute the client's instructions on the basis that, if he or she didn't, someone else would -- or should something be said along the lines of "don't you think that what you're doing is really likely to upset people?" Or should the instruction simply be rejected  on the basis of "we're not the sort of firm that does things like this".  Merpel adds, there may be a time when such marks can be registered -- but won't that be when they are no longer likely to be associated by victims of a disaster or tragedy with the event in question, or where there is a prevalent secondary meaning? Words like TITANIC must have been very painful for many people to bear at one time but, 102 years after the event, no objection now remains to that word's registration as a trade mark and use as a film title. When does bad taste fade?

Article 3(1)(f) of Trade Mark Directive 2008/95 provides that
"(f) trade marks which are contrary to public policy or to accepted principles of morality"
shall not be registered, and 15 U.S.C. para 1052(a) of the Lanham Act in the USA provides that registration shall be refused to a mark which
"Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; ..."
How would the wording of these provisions be applied to these applications?

What do readers think?

18 comments:

SG said...

I'm reminded of when the Boston Beer Company attempted to register the trade mark "BOSTON STRONG" in the wake of the bombing of the Boston marathon. Pretty distasteful, and that application was ultimately rejected.

http://www.boston.com/business/news/2014/04/21/feds-deny-attempts-trademark-boston-strong/u1CCJkSm5Ntxn8RIKmts1K/story.html

For the present example of MH17 and MH370, I also think its a disrespectful thing to do. In the Boston example, at least the slogan was presumably intended to be put on actual products for sale (i.e. bottles of beer). What would the flight numbers be applied to? Or would this just be an attempt to harass anyone using the flight numbers in their proper descriptive sense?

Anonymous said...

Have corresponding registrations of domain names been made? Or purchases of the flight numbers as keywords/adwords? That would be the surest indication yet that there's something pretty nasty going on.

Patricia Koch said...

In my opinion it is simply vile, trying to make money out of so many people's suffering. But on the other hand: who could they claim damages from? Only from someone using MH17 or MH370 as a trademark. Obviously not from someone who is talking about the flights.

So, who is going to use such trademarks? Someone even more vile tan the one who registers.

Who would then be more to blame, the company registering or the company using? If someone starts using MH17 or MH370 as trademarks I do not mind their having to pay damages, even if it is to these ... I prefer not to qualify them.

Anonymous said...

I struggle to see how the applicant could successfully extort any money for the usage made by newspapers and the like? Would the usage constitute an infringing act?!

Anonymous said...

Given that those flight numbers refer to every flight on those particular routes, and that will presumably continue in use, one has to wonder what's the point?

Anonymous said...

I assume that these applications will be directed against publishers bringing out books with MH17 or MH370 in their titles and/or marketing. This should fail if the courts take the same line that they took in Scotland in the Wet Wet Wet case http://www.heraldscotland.com/sport/spl/aberdeen/judge-backs-publisher-s-right-to-use-wet-wet-wet-title-1.657024 but there is nuisance value to the trade marks if granted, and if it's cheaper to pay a license fee than to litigate, most people will pay

Roufousse T. Fairfly said...

Re MH17: There are actually TWO European trademark applications.

The first one was indeed filed by the party identified above, which is based in Belize. An address in London is given, but it seems to be nothing more than an address for service, so the question posed is apparently moot in this particular case. Are the requirements for representation before Alicante as strict as those of the EPO?

A variety of activities are claimed under classes 9, 16 and 41.

There is a second application filed 21 July, in the same classes but with different descriptions. You might be surprised by identity of the applicant... Or not? Defensive filing? The applicant is represented by a High Street firm.

Sally Cooper said...

APPALLED ! APPALLED ! APPALLED ! Has the time come for someone somewhere - like IBIL in the UK - to concentrate thoughts of practitioners and make representations ?

Jeremy said...

Thanks, Roufousse, for your diligence; much appreciated!

Francisco said...

Argentina has a similar prohibition: Art. 3.e of our Trademark Law (Law 22.362).

That being said:

a. There could be a legitimate reason to try to register that trademark: i.e. someone who is developing a film about the tragedy.

b. Mentioning that flight number in a news story does not constitute a trademark use. I really don't see how could they monetize this trademark.

If there could

Anonymous said...

Disgusting as this is (and you would hope it would fall foul of morality/scandalous matter clauses in trademark laws), how could this applicant even have the right to register the mark?

Don't trade marks require that the applicant have used or be genuinely intending to use the trademark on goods or services, rather than just block/claim royalties from others using them.

Secondly, how could these flight numbers possibly distinguish the applicant's products and services? What are they and what classes?

Thirdly, wouldn't Malaysia Airlines have some claim of ownership, given that their services (flights) are identified by these numbers?

Perhaps my understanding of trade mark law is naive, but I don't understand how such a registration attempt could succeed. And it certainly should not.

Chris H said...

In Malaysia you may be interested to know that the airline itself has filed trade mark applications for MH370 and MH17 in 8 classes (3,5,9,16,25,39,41,43) on 30th April and 21st July respectively.

Notably there is an earlier application for MH370 in class 41 by a third party (Australian company Aoan International) on 14th March claiming priority to an Australian mark filed on 12th March (status: formal examination not ok).

I suspect the airline is filing defensive applications (perhaps with a view to preventing distasteful media and/or products) but I will try and find out more from my contacts here.

Incidentally, the codes themselves are no longer being used by the airline in light of the tragedies.

Nuno Pires de Carvalho said...

Sure, the attempt to register those two trademarks sounds quite macabre. But, apart from morality issues, the trademark attorney should perhaps have said to his/her clients:

1. Your should not try to register those trademarks because, when used in the context of civil aviation – in whatever meaning – the letters MH and the associated numbers 17 and 370 are codes attributed by IATA to a specific airline. They represent or express technical standards, which are not subject to private appropriation, in particular by third parties.

2. Even if the above were not true, under Article 17 of the TRIPS Agreement anyone is entitled to use registered trademarks as descriptive terms, i.e., with informative purposes. For example, a newspaper can report that “a craned that hauled a container filled with Evian mineral water bottles in the port of Amsterdam [here goes a tribute to Jacques Brel] has broken down and the falling container has killed two workers.” The laws and the practices of many countries have incorporated that provision. So I am afraid you are not going to make any money out of your registrations.

This, of course, would not have prevented that trademark attorney to charge his/her clients for a large amount of money, in view of the bad reputation and all the embarrassments that the attempt to register the trademarks would cause to them.

Best regards to you all.

Mary Rose O'Connor said...

Why not name and shame the individual who filed the application, the information is clearly viewable on OHIM’S tm view but then what do you do about the application filed by Malaysian airlines on Monday?

Certain terms associated with disasters may eventually fade particularly those with more local significance, eg stardust in Ireland or Hillsborough in the uk, Hard to see certain terms with more global significance ever becoming acceptable- maybe it will depend on what is put in the history books that our grandchildren will use at school.

Anonymous said...

My guess would be that the company wont try to extract money right away from Newspapers. Rather, they will wait until emotions cool down and then monetize on documentaries, books, and movies. Those are commercial products themselves who make money with the disasters, and as such have no credibility to complain.

How many Oscars did the Titanic movie win again? ...

Sonal Moore said...

In Australia, a company called Remit Now Int'l Ltd of KL, Malaysia, applied to register MH17 on 18 July 2014 claiming priority convention from a US application made on 17 July 2014. On 21 July 2014, Malaysian Airline System Berhad made its own application. The Sydney Morning Herald contained an article about Remit's application at http://www.smh.com.au/business/aviation/mh17-the-musical-mysterious-company-seeks-australian-trademark-20140724-zwapd.html.

Anonymous said...

I understand that Malaysia Airlines have retired the MH17 number and it will no longer be used for that particular flight/route

Christopher Morcom said...

However else it is described, the action of those responsible for filing these applications seems unaccepetable. Probably they ought to be refused as being contrary to public morality etc. But Trade mark Attorneys can only advise the applicants. They should not themselves pass judgement on their clients.

The applications made by Malaysian Airlines might be regarded as 'defensive' and (whether or not they might succeed) should therefore be viewed differently.

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