Celebrity names as trade marks: registration is increasingly difficult

In the matter of Trade Mark Application No. 2313504 in the name of Linkin Park LLC, 7 February 2005

Background

On 18 October 2002 Linkin Park LLC (LP), the corporate entity formed by the American band, Linkin Park, applied to register the trade mark LINKIN PARK in the UK for a variety of goods including key rings, jewellery, bags, clothing and also books, poster books, calendars, stickers and other paper items in class 16. The Trade Marks Registry, while eventually accepting most of the application, including for calendars and stickers, objected to "printed matter, posters and poster books" in class 16 under sections 3(1)(b) and (c) of the Trade Marks Act 1994 which prohibit: "(b) trade marks which are devoid of any distinctive character", and "(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or rendering of services, or other characteristics of goods or services".

Appeal

LP appealed the decision of the Registry hearing officer to the Appointed Person on a number of grounds. Richard Arnold QC sitting as the Appointed Person dismissed the appeal and confirmed that the mark was precluded from registration under section 3(1)(c) of the Act. He did not find it necessary to make any finding under section 3(1)(b).

The mark as an invented word

LP claimed first that the hearing officer failed to appreciate that the mark comprised invented words and therefore could not be descriptive. The Appointed Person rejected LP's argument: the key was the meaning of the mark at the date of the application not at the date that it was coined. As at the application date the mark was no longer meaningless, but on the contrary, had acquired a well-established meaning of denoting the band. Even though this did not make LINKIN PARK a dictionary term, it was clear from ECJ case law that this was not a pre-requisite for the application of section 3(1)(c). LP further argued that this led to a paradox in that the band was worse off now than if it had sought to register the mark when it was unknown and that it ought to have a stronger case for registration once it had become well known. The Appointed Person rejected this argument for two reasons: firstly, there was no evidence that LP is (or was at the application date) well known as a trade source of posters and secondly, a mark may by becoming distinctive for one class of goods or services (here, musical performances) become descriptive for another class of goods or services (here, printed mater, posters and poster books).

The "characteristics" of the goods

Secondly, LP argued that the mark did not designate a characteristic of the goods within section 3(1)(c) because subject matter was not a "characteristic". This was rejected by the Appointed Person, who concluded that the words "other characteristics" in section 3(1)(c) extended beyond the specific types of characteristic set out in the section, such as "kind" and "quality", and that the term could include the subject matter of the goods. The fact that there was no better way for a consumer to describe a poster of the band than a "LINKIN PARK poster" meant that the application of section 3(1)(c) could not be avoided.

Registry practice

Section 21 of Chapter 6 of the Registry's Works Manual differentiates between "mere image carriers" on the one hand and other types of goods on the other. Section 21.2 states that the names of famous people are likely to be perceived as merely descriptive of the subject matter of posters, photographs, transfers and figurines (image carriers) and are unlikely to be accepted by consumers as trade marks because they will be usually seen as descriptions of the subject matter of the product. LP argued that the Registry's practice was wrong and that performers should be able to prevent the use of their names without consent in relation to any goods and services without exception.

The Appointed Person disagreed and noted that neither UK nor EU legislation confers a right of personality on famous people. He analysed in some detail recent developments in the law of passing off following the Irvine v TalkSport case in which Eddie Irvine had successfully claimed in relation to a manipulated photograph of himself used in an advertising campaign. However, passing off still requires proof of goodwill and a misrepresentation being made to the public, whereas registration of the mark in relation to these goods would potentially free LP from having to prove either.

The Appointed Person also discussed the Arsenal v Reed case which he conceded provided the most support for LP's submissions. However, this case did not consider section 3(1)(b) or section 3(1)(c) and turned on its own facts, being primarily an infringement case. The ARSENAL mark had also been used over a long period of time in a manner which did indicate trade mark use.

The Appointed Person therefore disagreed with LP and concluded that section 21.2 of the Registry's Work Manual was correct. However, he went significantly further and expressed doubt as to whether a line should be drawn between "mere image carriers" and other products. He did not necessarily think that the application of the name of a performer or author acts as an indication of trade origin on a book, CD or MP3 file which embodies the performance or work, and he commented that consumers were well aware of the existence of unauthorised reproductions. He felt that the Registry's Manual was probably too lenient to trade mark applicants.

Inconsistency with other registrations

Finally, LP argued that the Hearing Officer's decision was inconsistent with other trade mark registrations, in particular its own corresponding Community Trade Mark (CTM) registered in class 16. The Appointed Person stated that without any practice statement or reasoned decision from OHIM, the CTM was "not even of persuasive value". Secondly, LP relied on the fact that ARSENAL is registered in Class 16. This was distinguished on two grounds: first, on the basis that the mark may have been registered due to distinctiveness acquired through use and secondly, on the basis that it related to a sporting team and not the name of a performer, and that perhaps the two should be treated differently. In any event, the Appointed Person relied on the general rule that the existing state of the register is to be discounted when assessing the validity of new applications.

Comment

The decision raises interesting questions as to the function of trade marks, the extent to which famous people should be able to protect their names and images by registration and the relationship between trade mark protection and other intellectual property rights. While the particular decision reached here, that the mark was unregistrable for posters, does not come as a great surprise, there remain many unanswered questions as to the ambit of trade mark protection for celebrities. In particular, it is not clear why the Registry had decided in the first instance to accept the application in relation to other paper goods such as calendars and stickers, and where (and indeed, whether) a line can be drawn as between "image carrier" type goods and other goods and services. As the Appointed Person indicated, it is will now be more important for trade mark applicants to file evidence of use to try to prove that their marks are perceived by the public as indications of trade origin. A further complication is the large number of CTMs which are registered in circumstances which may not be accepted by the UK Registry, and the dubious validity of those CTMs in the event of an enforcement action in the UK.