Naked Law

Come and Meet us at INTA 2008

The 130th Annual International Trademark Association's Meeting is fast approaching!  This meeting is widely attended by all who work with trade marks and is this year being held in Berlin from 17th to 21st May.  It is estimated that around 8,000 will attend this year's meeting from all over the world in order to network with colleagues and attend the educational programmes and dicussions which are organised each year.

Lawyers from Mills & Reeve attend this event each year and this year the firm will be sending a team of trade mark lawyers consisting of Alasdair Poore, Richard Plaistowe, Rachel Witt and myself.  We have been busy setting up meetings with colleagues from all over the world and are really looking forward to attending INTA 2008 and visiting Berlin.  Please let us know if you will also be attending and would like to set up a meeting with us!

It's MY Space

Nominet has ordered that the domain name myspace.co.uk be transferred to MySpace (the social networking site) under the Dispute Resolution Service Procedure. This is in spite of the fact that the original registrant, Total Web Solutions, registered the domain name some six years before the creation of the social networking site! The myspace.co.uk address led to a parked page containing adverts for social networking sites and the Nominet expert held that the income received by Total Web Solutions through its use of the domain name derived "in part as a consequence of it being able to trade off the reputation of the Complainant."

Total Web Solutions relied on the case concerning the name verbatim.co.uk and tried to argue that it had not been aware of the complainant at the time of registration or at the time that it first used the domain name and therefore that the registration could not be abusive. However, the Dispute Resolution Policy ("DRP") states that an Abusive Registration occurs where a domain name, either "at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; or has been used in a manner which took unfair advantage of or was unfairly detrimental to your [the Complainant's] Rights...or both." Total Web Solutions had originally tried to sell the domain name to MySpace for around £220,000, although this was found not to be evidence of abuse.

The decision might add fuel to the argument that Nominet and the DRP tend to favour corporate giants, though it also serves as a reminder that a registration that was initially legitimate may become abusive if the registrant subsequently changes its usage of the domain name.

Scrab-u-lose!

Toy giants Hasbro, makers of the board game Scrabble, have written to the owners of Facebook asking that they remove the application Scrabulous from their website.

Scrabulous which is apparently one of the ten most popular Facebook applications attracts more than 500,000 users a day to the social networking site and appears to make litte effort to distinguish itself from Scrabble. It even provides a link to the Wikipedia definition of Scrabble from its rules page.  It's perhaps little wonder, then, that Hasbro accuses the makers of "gross copyright and trademark infringement" of Hasbro's rights in Scrabble.

The fact that Facebook has not immediately shut down the Scrabulous application has lead to suggestions that Hasbro may be willing to do a deal with the makers of Scrabulous.  This would certainly please the 13,000+ users who have signed up to the petition group 'Save Scrabulous' but may depend on the terms of the licensing deal Hasbro agreed with EA Casual in August 2007 which grants EA an exclusive worldwide to develop 'interactive experiences (of Hasbro's games) for a mass audience to play across key platforms including mobile, online, handheld, PC and Consoles'.  Any settlement involving a licence from Hasbro is likely to need EA's consent.

Direct Line wheels out winner

Direct Line recently won in the High Court, in contesting an application by rival esure to have a trade mark registered for a computer mouse on wheels.

To explain the background, in September 2004 esure applied to register a representation of a computer mouse on wheels, see here. Direct Line, with their well known, registered, telephone on wheels trade mark, opposed this application successfully with the intellectual property office hearing officer on the basis that it would be detrimental to the distinctive character of Direct Line's mark, contrary to S. 5(3) of the Trade Marks Act 1994. esure then appealed to the High Court.

In its judgment, the Court dismissed part of Direct Line's claim that the marks were confusingly similar in accordance with S. 5(2) of the Trade Marks Act. However, esure still lost, since they would be taking unfair detrimental advantage of Direct Line's mark, contrary to S. 5(3). The hearing officer's view, that use by esure of their logo would be 'parasitic and unfair' was endorsed by the High Court judge, Lindsay LJ.

This judgment does seem a reasonable outcome on the facts, though my view is that the marks were also confusingly similar. The Limoncello case (as reported here by IPKAT) T-7/04 Shaker di L. Laudato & C. Sas v OHIM, Limiñana y Botella, SL offered guidance at paragraph 67:

'The fact that the average consumer retains only an imperfect mental image of the trade mark renders the dominant element of the mark in question of major importance'.

While this decision has been criticised, it makes good sense to me. If applied in the present case, I think that there is a strong argument that the 'dominant element' of the Direct Line trade mark is the use of wheels on an everyday object that doesn't usually have wheels on, in connection with their particular class of services.

Playboy win appeal

Playboy Enterprises International Inc (“Playboy”) has won its appeal appeal to overturn Nominet’s decision not to transfer the domain name playboyracing.co.uk to it.

Playboy had argued that Trevor Hodges, who registered the domain name and had intended to use it in relation to a horse racing club, was taking unfair advantage of Playboy’s rights to the “Playboy” name and that the registration was unfairly detrimental. Playboy argued that it had a large portfolio of trade mark registrations featuring the name “Playboy” for a wide range of goods and services, including sporting activities, and operated a high profile motor racing team in the US under the brand “Playboy Racing”. However, Nominet’s expert found that the registration was not abusive because, among other things, Playboy was not active in the same field as Mr Hodges and so there was no likelihood that the public would be confused.

Playboy appealed against the decision. The Appeal Panel found that Playboy had strong rights to the “Playboy” name, which was similar to the domain name in question and that registration of playboyracing.co.uk by Mr Hodges was an abusive registration. The Panel felt that the expert at first instance had placed too much emphasis on the registrant's lack of intention to target Playboy. The Panel commented that although intent can be useful in demonstrating an abusive registration, it is not necessary – the test is more objective.

Has Nominet gone too far in its protection against dilution of what is essentially a generic (albeit well-known) name?

iPhone off the hook

We recently reported that Cisco had launched a trade mark infringement claim against Apple over use of its registered `iphone` trade mark.

It now appears that Cisco and Apple have reached a settlement which will allow Apple to use the `iphone` name for its new product, which combines a mobile phone with an e-mail receiver and an MP3 player.  The parties have also announced that they will work together to make their `iphone` products compatible. 

Other terms of the settlement agreement remain confidential, although the parties have apparently agreed to drop all pending legal actions against each other.  Does this mark the end of the dispute, or is there more to come?  One thing is certain - as a result of this dispute both parties have received a lot of publicity for their respective products.

Gowers goes into bat

The Government has been carrying out a review of intellectual property legislation in the UK to see if any improvements need to be made to update the system for the 21st century. Andrew Gowers was appointed to lead the review, and his findings were published earlier this month. The full report is available here.

There are a number of key recommendations, but the first to catch our eye was recommendation 53 - that the UK Patent Office should be renamed...wait for it...the UK Intellectual Property Office.

Celebrity squatting

Tom Cruise recently brought an action against a known cybersquatter who had registered the actor’s name as a domain name and was using it to attract internet surfers, who were then re-routed to the cybersquatter’s main site www.celebrity1000.com.

The dispute was heard under the ‘Uniform Dispute Resolution Policy’ (UDRP), which applies to all .com domain names. In the UK, Nominet has its own policy for .co.uk domains, which is similar to the UDRP.

Tom Cruise’s lawyers argued that he had common law trade mark rights. Although Tom Cruise does not own a registered trade mark in his name, they argued that nonetheless he has the right to stop other people from using and profiting from it. They also submitted that the cybersquatter was making money from third party adverts on the website and that internet users would be confused into thinking that the site was linked to Tom Cruise. These arguments were successful and the domain name was ordered to be transferred to Tom Cruise (see the decision here).

Some commentators have questioned this result, arguing that the decision of the panel was based on an incorrect finding of fact that the cybersquatter’s celebrity website was primarily focussed on advertising. The Nominet and UDRP procedures have no system of precedent – each panel must act in accordance with the relevant policy, and make its decision based solely on the facts before it and not on previous rulings.

However, despite this lack of certainty, the Nominet and UDRP procedures remain much more cost effective than court action.

Brands (and trade mark lawyers) to get a ‘Second Life’?

The clothing firm American Apparel must be tempted to view their opening of a ‘cyberstore’ in the smash-hit online world of Second Life last month as ‘mission already accomplished’. When interviewed for a piece in The Guardian, their director of web services was keen to play down the revenue-generating expectations of the virtual store, framing it as an experiment in marketing and brand-building. But given the whirlwind of free publicity generated by this story for both American Apparel and Second Life, it seems certain that other ‘real world’ companies will want to follow suit. And as more companies look to promote themselves in such virtual environments, so will their motivation grow to fight any infringements of their brands - such as the virtual computers sold on Second Life that look rather similar to Apple laptops.

In the US the Digital Millennium Copyright Act 1998 provides ‘safe harbour’ for intermediaries such as ISPs, and the creators of Second Life, for copyright infringement by its users, provided they take action to block these infringements when notified by the copyright holder (we have similar exemptions in the UK under the E-Commerce Directive for ISPs caching, hosting or acting as "mere conduits").

However the DMCA does not provide protection for trade mark infringements, and following a 2001 ruling in the US (see here for more details) those such as the Second Life creators Linden Labs could risk potential liability for contributory infringement if they choose to turn a blind eye. Not that Linden Labs are likely to do so – they probably have as much to gain by policing their virtual world, and promoting customer and investor confidence, as those who actually own the brands. But the potential for future litigation is certainly there for intermediaries such as ISPs who take a more laissez-faire approach.

Action taken against domain name registrars

Domain name registrars who operate their businesses in a legitimate manner will be pleased to see action being taken against registrars who abuse their position. As reported by the BBC, EURid, the European Registry for Domain Names, which is responsible for administering the top level .eu domain name, is taking action against registrars believed to be “warehousing” up to 74,000 new .eu domain names in the domain. “Warehousing”, or registering for resale, is regarded as a breach of the EURid rules. There have been complaints for some time about registrars who flout the rules which apply to them, particularly by permitting abusive registrations or making it more difficult to challenge such registrations. This action will therefore be seen as a welcome move.