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Trade mark issues are in the spotlight yet again this month, as a recent case involving Shakespearean trade marks highlights the need to review your trade marks regularly to make sure that they cover all of your business activities.
Legal background
Businesses, as well as individuals, can obtain registered trade marks which are effective in the UK, or, at a greater cost, Community Trade Marks (CTM) which are effective throughout the EU. In both cases, the application has to be made for one or more of the standard 45 classes of goods and services. The more classes applied for, the greater the fees and the greater the chance of the application being challenged at some later date.
The case
Shakespeare still sells, be it on stage or in a restaurant.
In 1998 the Royal Shakespeare Company (the RSC) registered the CTM “RSC – Royal Shakespeare Company”.
In 2003 an Austrian company, Jackson International Trading (Jackson), was granted the CTM “Royal Shakespeare” for the following classes – 32 (beer), 33 (other alcoholic drinks) and 42 (providing food and drink, restaurants and bars).
In 2006 the RSC applied for a declaration that Jackson’s CTM was invalid.
The RSC lost the first round but then won its appeal. Jackson then appealed in its turn, but its arguments were dismissed this month.
In order to fight Jackson’s appeal, the RSC had to produce a great deal of evidence, including press cuttings, a survey and lists of regional tours and TV and radio recordings. One of their arguments was that UK law would allow it to prohibit the use of the contested trade mark under the law of passing off, in particular on the basis of its non-registered trade mark Royal Shakespeare Company which had been used in the course of trade in the UK.
What do we learn from this?
David Cavaliero, partner in Withy King’s Technology and Media team, comments: “One of Jackson’s arguments was that its “Royal Shakespeare” CTM was not sufficiently similar to the RSC’s CTM “RSC – Royal Shakespeare Company”. Although this argument was dismissed, it does highlight that it would have been better for the RSC to have had a registered trade mark for “Royal Shakespeare Company”, as the RSC might have had a stronger case.”
So this case emphasises several things:
- It’s well worth having a trade mark monitoring service so you are aware of similar trade marks applied for by other businesses;
- You need to keep your trade marks under review and file new trade mark applications as you adopt new brands;
- And last but not least, you need to increase the classes that your trade marks cover as you expand your range of goods and services.
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