This particular member of the IPKat team is a little squeamish about displaying naughty words and slogans on his weblog, even to the point of being reluctant to display real registered trade marks, none of which are actually rude in their own right. However, he notes that, following the abysmal performance of the England football team in the World Cup, the annoyance and frustration of supporters is bound to express itself in a variety of forms. Much of fans' resentment is at the apparent inverse correlation between the success of the national team in major competitions and the degree of commercialisation of the sport.
The hyperlink at the end of this paragraph carries with it a Bad Taste Warning. Do not click if you are easily offended. The image in question is captioned "England's New Shirt Sponsors" and the message is a powerful one. A legal question remains as to whether any of the proprietors of the registered trade marks in question has any redress. There is no defence of parody to an action for trade mark infringement in Europe -- but who says that there has been an infringement? All of the marks are well-known, and arguably none might wish to be associated with England's next international soccer campaign for fear of tarnishing its own good reputation. One of the marks is also a descriptive term for a style of football, made famous itself by the Dutch national team in the 1970s. In at least one case the proprietor's registration covers the goods in question -- but who can say that there is any use in the course of trade? The message may be simple, but the legal issues are many.
The hyperlink at the end of this paragraph carries with it a Bad Taste Warning. Do not click if you are easily offended. The image in question is captioned "England's New Shirt Sponsors" and the message is a powerful one. A legal question remains as to whether any of the proprietors of the registered trade marks in question has any redress. There is no defence of parody to an action for trade mark infringement in Europe -- but who says that there has been an infringement? All of the marks are well-known, and arguably none might wish to be associated with England's next international soccer campaign for fear of tarnishing its own good reputation. One of the marks is also a descriptive term for a style of football, made famous itself by the Dutch national team in the 1970s. In at least one case the proprietor's registration covers the goods in question -- but who can say that there is any use in the course of trade? The message may be simple, but the legal issues are many.
You can see the artwork in question for yourself here.
England's new shirt sponsors?
![England's new shirt sponsors?]()
Reviewed by Jeremy
on
Friday, July 09, 2010
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As I understand it, the fact that England have their footballs supplied by Nike meant that they weren't able to practice with the ball they would actually be using in the games. This seems a clear case of sponsorship actually messing up the team's performance.
ReplyDeleteLink doesn't work? Blocked by Google?
ReplyDelete@Anonymous 2:53pm The link works just fine. Blocked by your filter?
ReplyDeleteI've already forwarded the pix to a couple of Englishmen, and indicated where complaints should be filed. ;-)
ReplyDeleteThis reminds me of a DHL ad campaign. The version shown in Germany was actually cut out of photographs of their competitors' logos as apposed on parcels or lorries, and was thus even more recognisable. I wonder how one could get back at them. Cobble some sentence based on the DHL acronym, such as "Delivered Horribly Late"?
This article brings to mind a famous matter in South Africa: Laugh It Off vs SABMiller, which was decided before the SA Constitutional Court in 2005. Before moving to Britain I practised at Adams & Adams, who represented SABMiller, and I was with the firm while the matter was before the courts.
ReplyDeleteBriefly, the dispute was between SAB Miller, who makes Carling Black Label beer, and Laugh it Off Promotions cc. Laugh It Off produces t-shirts employing the general layout of well known advertising images, altered to display a message of "social satire or parody". One of the t-shirts produced by Laugh it Off was an altered version of the Carling Black Label beer label. SAB’s trade mark, "BLACK LABEL", was replaced by "BLACK LABOUR", while the slogan "AMERICA’S LUSTY, LIVELY BEER – BREWED IN SOUTH AFRICA" was replaced by "AFRICA’S LUSTY, LIVELY, EXPLOITATION SINCE 1652 – NO REGARD GIVEN WORLDWIDE". Two of SA’s lower courts had ruled in SAB’s favour based on the anti dilution provisions of SA Trade Mark Law and granted interdicts against Laugh it Off, who attempted to raise “fair use” or parody as a defence. As is the case in Europe, this is not a defence in SA Trade Mark Law.
In a step previously unheard of in trade mark litigation, Laugh it Off appealed to the Constitutional Court (CC), raising the defence of freedom of expression. The CC overruled the earlier judgments, a severe blow to SAB and a setback to all proprietors of well known trade marks which are potential targets to dilution by tarnishment.
The CC held that IP rights should be placed on an equal footing with other fundamental rights enshrined in the constitution. It conceded that the anti-dilution provisions of SA’s Trade Mark Law would prohibit certain expressive conduct in relation to registered marks of repute, but it assumed that the limitation is reasonable and justifiable in an open and democratic society. Nevertheless, the court felt compelled to interpret the provision in a manner compatible with the right to free expression. The CC ruled that trade mark infringement only occurs if "unfair advantage" or "unfair detriment" is shown. The detriment must not be flimsy or negligible and must be substantial in the sense that it is likely to cause substantial harm to the uniqueness and repute of the trade mark. The CC concluded that the owner of the mark bears the onus to demonstrate likelihood of substantial harm or detriment which, seen within the context of the case, amounts to unfairness. The CC found that there was no real evidence that SAB would suffer financial loss and ruled in favour of Laugh it Off. (The CC observed that the mere fact that the express message on the T-shirt may indeed stir discomfort in some and appear to be morally reprobate or unsavoury to others is not ordinarily indicative of a breach of the anti dilution provisions. Such a moral or other censure is an irrelevant consideration if expression enjoys protection under the Constitution. The CC found that in SAB’s depositions there were no facts which dealt with probability of trade or commercial harm).
As a result of this decision, while the anti-dilution provisions are still available to trade mark owners, they are now required to prove the likelihood of substantial harm. Once infringement has been established, it will also be necessary to overcome the freedom of expression defence.
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ReplyDeleteThere's probably not much one could do with a mocked up picture on the internet. However, were Umbro ever to think about going into production!!...this would be another perfect chance to blow the vuvuzela for the vastly underrated RCD, Registered Community Design, more powerful than a surging run from Mr Rooney (with or without the ball) and the longevity to endure more than another 24 years of hurt.
ReplyDeleteWe advised our client UPS to obtain RCD protection for their new logo in 2004, which they duly did. Straightforward infringement!
Angela, your SA case is evokative of what AdBusters are doing.
ReplyDeleteI found the version of the DHL ad I was referring to here.
ReplyDelete