Trust, trade marks and trouble in the Glens: how far can trust go?

Glencoe

For this Kat, whenever he hears the word "Glen" he thinks of Scotch whisky -- and when he discovered a trade mark tussle over Glencoe and Glenfinnan, he automatically assumed that this was something to do with brands of single malt. The assumption was however erroneous, as long-time Katfriend and sage Scottish IP commentator Gill Grassie explains.  Like the 2014 referendum on Scottish independence, this item poses the question "who is best placed to protect and preserve the best interests of Scotland?" though the context here is very different.   This is what Gill writes:

The National Trust for Scotland (NTS), best known for its ownership of a large number of historically significant buildings and land -- very much tangible property -- is now expanding its portfolio in the intangible property sphere. Its aim is to use intellectual property to prevent the commercial exploitation of two of Scotland’s best known historical sites. Is it appropriate and legitimate for it to do so?

The NTS has has applied to register as trade mark the names of two of the most famous Scottish historical locations – Glencoe (the site of the 1682 massacre of the MacDonalds) and Glenfinnan (where Bonnie Prince Charlie is said to have raised his standard in 1745). In doing so the Trust is creating some controversy. The Trust has been in trade mark wars before when, some three years ago, it became embroiled in a row with Western Isles Council over the Trust’s application to register St Kilda as a trade mark. While it seems that the St Kilda matter was ultimately resolved, the current situation must seem to the Trust like déjà vu.

Glenfinnan

A number of local businesses and representative organisations have already outlined their concerns over the Trust’s latest foray into the IP realm, and the Trust may have a fair bit of work to do to calm the situation and secure local support for its initiatives. Public relations concerns aside, the reasons it will have for the applications have some merit in terms of their goals, but do they work from a trade mark point of view? The Trust says that it wants to prevent inappropriate exploitation of the names by third parties or by parties not located at or nearby the locations concerned. It has also made it clear that its ownership of these two marks would not be used to prevent the use of the names by local businesses wishing to use them as a geographical descriptor, or already using them as a form of branding. The Trust appears to be taking on the role of protector or even trustee of the local goodwill in these names, even though many third parties will also have a significant interest.

Flora MacDonald's farewell
to Bonnie Prince Charlie

The assurances which the Trust has provided in terms of the limitations they would adhere to in any future enforcement are no doubt helpful, insofar as they go. Nevertheless, registered trade mark rights are a legally enforceable monopoly, and it may well prove tricky in future for the Trust to make the right calls on when it is appropriate to take steps to exert its rights against third parties whether they are based locally or not. This is because there is clearly a potential clash with pre-existing use of these names as trade marks/brands by local businesses in particular. There will also be grey areas in future as to when third party use is truly descriptive --  and thus excepted from being an infringement of trade mark rights under section 11(2)(b) of the UK Trade Marks Act 1994 -- and when it is use as a form of branding. It may be that local businesses will want to avoid any doubt about their proposed or existing use of these well-known names, and will therefore wish to have more than general comfort that they are free to proceed.

No doubt the Trust will have a detailed policy in place for exactly how it will manage its expanding trade mark portfolio, but it may well have some initial work to do in persuading local business leaders that they should ‘trust’ it to do the right thing. Indeed, given section 3(1) of the Trade Marks Act [absolute grounds for refusal of a trade mark application = Article 3 of Trade Mark Directive 2008/95] it would seem necessary for it to establish pre-existing use and acquired distinctiveness in order to be able to register the marks successfully in the first place. It will be fascinating to see what transpires and if any oppositions are filed.

Thanks, Gill, says this Kat. We look forward to finding out what happens!

Silicon Glen here
Monarch of the Glen here and here
Glen Campbell here
Glenn Miller here