SPARE A THOUGHT FOR CELEBRITIES

The IPKat brings news of Sir Alexander Chapman Ferguson’s only slightly doomed application to register ALEX FERGUSON as a trade mark. The Man U manager applied to register the mark for Classes 6, 9, 14, 16, 25, 28 and 41. The Registry objected that the mark was descriptive and lacked distinctiveness. Sir Alex split the application in two and (somehow) got the application through for the goods in Classes 6, 9, 14, 25, 28 and 41. However, the Registry and its hearing officer maintained its objections with regard to the Class 16 goods (printed matter, posters, photos, transfers, stickers and the quaintly named decalcomanias). The core of the objection lay in the Registry’s practice with regard to the names and images of famous people. While famous names may be registered for certain goods or services where they will lead consumers to believed that the goods bearing them are under the control of one undertaking, the Registry has taken the position in its Works Manual that the name or image of a famous person when used on posters, photos, stickers and figurines etc will merely be seen as descriptive of the subject matter of those goods. As such they are ‘mere image carriers’ and cannot be registered for lack of distinctiveness and descriptiveness.

Sir Alex appealed to the Lord Chancellor’s Appointed Person, arguing that the Registry’s approach was unlawful because it breached the European Convention on Human Rights. There were three strands to the argument:

1. There had been a breach of Art.1 Protocol 1 (right to peaceful enjoyment of possessions) in failing to grant the trade mark since trade marks are classed as ‘possessions’ for this purpose.

2. The Registry’s approach was discriminatory under Art.14 since Sir Alex had been denied the right to enjoy his Art.1 Protocol 1 possessions on account of his celebrity status (essentially an argument of discrimination against celebrities).

3. The need for other traders to use the term descriptively could be protected under the Art.6 Directive 89/104 defences.

The LCAP wasn’t impressed with any of these arguments. Following Budweiser v Portugal, trade mark applications are not counted as possessions for ECHR purposes. An Art.14 discrimination claim must be ‘tied’ to one of the other Convention rights, in the sense that discrimination alone isn’t enough, there must be discriminatory application of one of the Convention rights. Moreover, it wasn’t clear that discrimination on grounds of celebrity was covered by Art.14. Finally, the ECJ has instructed that one shouldn’t look at the defences when considering registrability issues.

However, the LCAP felt that there was a question of general importance in this appeal which potentially merited a reference to the ECJ. The UK position, that the more famous you are, the less likely you are to gain registration for certain goods, had not been followed by OHIM, or the other Member States and was arguably too strict.

Neither side wanted a reference. The Registrar pointed to the deficiencies in Sir Alex’s argument discussed above but conceded that if Sir Alex’s discrimination argument was put on a broader basis, it might merit a reference. Sir Alex objected to a reference on the ground that what was required of the LCAP was merely to apply English law i.e. the Registry Practice in the light of the Human Rights Act (incidentally, this involved following the dissenting judgment in the Budweiser case).

The LCAP remained of the opinion that there was a question of general importance, but this could not be taken further because Sir Alex decided to limit the scope of his appeal to the Human Rights Act point. Having had ‘a go’ at the appeal, the LCAP handed the decision over to another hearing officer.

The IPKat can understand why Sir Alex wouldn’t want a reference. The LCAP system is meant to be quick and cheap. A trip to Luxembourg is neither quick nor cheap. Moreover, he has also obtained registrations in so many classes of goods that it is probably worth letting Class 16 go. The IPKat doesn’t think much of Sir Alex’s chances of succeeding on the ECHR/Human Rights Act case. To succeed on either point, Sir Alex would have to show that a trade mark application was a possession, which flies in the face of the most recent Strasbourg case law on the subject. Instead, a broader, Directive 89/104-based attack of the Registry practice would probably work better. The ECJ has already ruled numerous times that per se rules concerning registrability are incorrect, and that each application should be considered on its merit, yet the ‘mere image carrier’ rule appears to amount to just such a per se rule.