The IPKat has finally come to grips with a decision by Richard Arnold QC (sitting in his capacity of Lord Chancellor’s Appointed Person) that is a “must-read” for all those who are involved or interested in the legal aspects of merchandising.

Poster poser

The rock band Linkin Park applied to register the words LINKIN PARK as a trade mark in the UK in Class 16 for printed matter, posters and books. During the examination the examiner took objection to the mark under ss 3(1)(b) and (c) of the Trade Marks Act 1994. No evidence of acquired distinctive character was produced. These objections were upheld by the hearing office. Linkin Park appealed to the LCAP, who dismissed the appeal. Here are the highlights:

* Although passing off was not raised by Linkin Park’s trade mark attorney, it was appropriate to refer to recent developments in the law of passing off. Following Irvine v Talksport, the UK position is that a performer whose name and/or likeness is used in is used in merchandising, advertising or other commercial activities in such a manner as to suggest that he or she has licensed or endorsed those activities contrary to the fact is likely to have a remedy in passing off. However, the performer has no remedy in passing off if his or her name or likeness is used in manner which does not mislead members of the public into believing that he or she has licensed or endorsed the use. This brings the law in the UK into line with the law in Australia, as stated in Henderson v Radio Corporation.

* Although the word LINKIN and the phrase LINKIN PARK were invented by the group and were meaningless at the point at which they were coined by the group, it is the meaning of the mark at the application date that is decisive. At the application date, this mark was no longer meaningless. Instead it denoted the group. Even though this did not make LINKIN PARK a dictionary term, it is clear from the ECJ that signs need not be dictionary terms in order to be considered descriptive. This did not though put the group in a worse position once it was well-known.

* It was not the case that, in order to be a characteristic of the goods, the thing denoted by the sign has to be a measurable property of goods rather than information content of the goods. In fact, the information content is a critical characteristic of many goods, particularly computer programs.

* In order to fall within s.3(1)(c), the sign does not have to fall within one of the types described in that section.

* The fact that there was no better way of describing a poster of the group than as “a LINKIN PARK” poster mean that the application of s.3(1)(c) could not be avoided. A consumer who wanted to ask a shop assistant whether the shop stocked posters depicting the group would most likely ask “Do you have any LINKIN PARK posters?” In this question, the applied for mark was clearly being used to describe a characteristic of the goods being sought, namely their subject matter.

* It would be impossible for those wishing to trade in posters of the group to market their products without using the LINKIN PARK mark. The group could not be denoted in any other way (such as their image).

* Linkin Park’s argument that performers should be able to stop the use of their names without consent in relation to any goods or services without exception was without authority.

* As the law presently stands, the starting point of any consideration of the distinctiveness and hence descriptiveness of a mark is the essential function of a trade mark, which is basically to denote the origin of the goods. The name of a performer, like the name of an author, undoubtedly identifies the origin of the performance or work. However, it does not follow that the name of the performer or author acts as an indication of the trade origin of a product (e.g. a CD, book or MP3 file) which embodies the performance or work. Even where the performance or work is protected by copyright or performers’ rights, consumers are aware of the existence of unauthorised reproductions. Where consumers have obtained unauthorised copies of performances or works, the name of the performer continues to accurately designate a characteristic of the music track, namely the origin of the performance, even though the consumer has infringed various IP rights and the consumer will probably be aware that he has committed an infringing act. Moreover, copyright and performers’ rights are of finite duration. Once the rights have expired, the author can no longer control the work and so the author’s name cannot function on a trade mark even on the basis that his consent is required for the work to be reproduced and distributed..

* Whether the public will expect the goods to be authorised will depend on the types of goods in question, but no clear line can be drawn on the basis of some goods being “media” and others being “mere image carriers”.

* The copyright position was at odds with the proposition that consumers would expect merchandise pertaining to the group to be authorised by the group. The first owner of copyright in photographs of the group would be the photographer or his employer and so the photographs would be exploitable without the group’s consent.

* Even if the authors’ names were registered for CDs and books because of consumer expectation about authorization, that would not mean that the mark was registrable for posters. In so far as applicants rely on consumer expectations about authorization, it is for the applicants to show evidence of these expectations.

* Comments on the status of Arsenal v Reed (at all levels), the Scottish case of Bravado v Mainstream and R v Johnstone were also made.

The IPKat notes that this case appears to severely limit, and possibly eliminate, the ability of musicians to gain registration in the UK of marks to be used on their merchandise. Their ability to gain registration for recordings of their performances also appears to be threatened. Merpel wonders why the LCAP prefaced his decision with comments on passing off, even though this cause of action was not raised by Linkin Park. She suspects that the LCAP may have been reassuring performers that, even though their ability to obtain trade mark registrations for merchandise and even records has been cut to the quick, the can still protect themselves by recourse to unregistered trade mark law.

Lincoln Park here
Linking parks here

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