Free speech v TMs - the High Court approach
The IPKat brings news of a tricky little case involving the interface between trade mark dilution and free speech. In Miss World Ltd v Channel 4, a judgment delivered on 16 April, Pumfrey J ruled on the conditions under which interim relief should be refused in a trade mark case on free speech grounds under s.12 of the Human Rights Act.
The proprietor of the MISS WORLD trade mark (of the beauty pageant fame) objected to Channel 4 entitling a programme which followed the fortunes of competitors in a Thai transvestite and transsexual beauty contest ‘Mr Miss World’.
First challenge was for Miss World Limited (MWL) to show trade mark infringement. They went in with all guns blazing, and had a bash at all three forms of infringement.
On s.10(1), Pumfrey J rules there were 2 ways of looking at this. If the Mr was viewed by the public as qualifying a product from the Miss World ‘stable’, the marks would be identical, since Miss World
would remain a distinctive mark as used by the defendant. However, if the whole term was to be viewed as one composite mark, then it would be right to rely on s.10(2) instead. [The IPKat is intrigued by the stealthy protection of brand extensions through the strongest form of trade mark infringement.]
On s.10(2), MWL’s registration included TV programmes, so there was identity of services, plus the marks were clearly similar, so there was a strongly arguable case.
On s.10(3), the judge noted the fact that the courts have noted the public’s ambivalence to matters sexual. [The IPKat’s not impressed – these cases were decided on their facts. Plus, if one wanted to nitpick, one could note that in previous cases, the ‘distasteful’ association has been with an act of intercourse, or associated paraphernalia, while this case concerns sexual orientation. The courts should think carefully before taking the approach that sex and sexual orientation should be treated in the same way in establishing detriment.]
At this point, the s.10(3) case merged into the s.12 HRA case. The judge noted that the interface between registered trade mark law and free speech is far from worked out, though he did make liberal reference to the South African Black Labour case (noted here by the IPKat).
In this case though, the judge didn’t seem to find it too difficult. The purpose of using the Miss World element was as a short hand to convey a beauty pagent for transvestites and transsexual. Consequently, its ‘principle function’ was to take unfir advantage of the distinctive character and repute of the Miss World mark. [The IPKat is troubled. Granted, it takes advantage, but what renders that advantage unfair? The fact that a short cut has been taken? The Kat thought short cuts were allowed in a competitive market, unless they infringe someone else’s rights. To render short cuts automatically infringing just leads to circularity on a grand scale].
The judge had difficulty with the idea that the use of a trade mark could itself engage Art 10 (free speech). Additionally, there was a strongly arguable case that at least one of the heads of infringement would be make out. Therefore, s.12(3) HRA (which states there must be no relief that would restrain publication which would affect the exercise of an ECHR right, unless the applicant is likely to establish that publication should not be allowed) was not satisfied, and interim relief could be granted.
Whether it should be granted depended ultimately on the balance of convenience. After detailing the relevant considerations, the judge concluded that an injunction was in order, concluding helpfully ‘It is very difficult to explain how I balance up the essentially incommensurable considerations outlined above…’ [Indeed, says the IPKat].
On the whole, the IPKat is unimpressed. The judge hasn’t got much further than saying that it’s all very difficult, though that hasn’t stopped him from expressing serious scepticism about whether there would ever be a conflict where free speech would win.The Kat is particularly troubled by the way that the existence of s.10(3) infringement and the free speech issue have been conflated. He hopes this is the beginning of an ongoing dialogue on the free speech/trade mark interface.
The proprietor of the MISS WORLD trade mark (of the beauty pageant fame) objected to Channel 4 entitling a programme which followed the fortunes of competitors in a Thai transvestite and transsexual beauty contest ‘Mr Miss World’.
First challenge was for Miss World Limited (MWL) to show trade mark infringement. They went in with all guns blazing, and had a bash at all three forms of infringement.
On s.10(1), Pumfrey J rules there were 2 ways of looking at this. If the Mr was viewed by the public as qualifying a product from the Miss World ‘stable’, the marks would be identical, since Miss World
would remain a distinctive mark as used by the defendant. However, if the whole term was to be viewed as one composite mark, then it would be right to rely on s.10(2) instead. [The IPKat is intrigued by the stealthy protection of brand extensions through the strongest form of trade mark infringement.]On s.10(2), MWL’s registration included TV programmes, so there was identity of services, plus the marks were clearly similar, so there was a strongly arguable case.
On s.10(3), the judge noted the fact that the courts have noted the public’s ambivalence to matters sexual. [The IPKat’s not impressed – these cases were decided on their facts. Plus, if one wanted to nitpick, one could note that in previous cases, the ‘distasteful’ association has been with an act of intercourse, or associated paraphernalia, while this case concerns sexual orientation. The courts should think carefully before taking the approach that sex and sexual orientation should be treated in the same way in establishing detriment.]
At this point, the s.10(3) case merged into the s.12 HRA case. The judge noted that the interface between registered trade mark law and free speech is far from worked out, though he did make liberal reference to the South African Black Labour case (noted here by the IPKat).
In this case though, the judge didn’t seem to find it too difficult. The purpose of using the Miss World element was as a short hand to convey a beauty pagent for transvestites and transsexual. Consequently, its ‘principle function’ was to take unfir advantage of the distinctive character and repute of the Miss World mark. [The IPKat is troubled. Granted, it takes advantage, but what renders that advantage unfair? The fact that a short cut has been taken? The Kat thought short cuts were allowed in a competitive market, unless they infringe someone else’s rights. To render short cuts automatically infringing just leads to circularity on a grand scale].
The judge had difficulty with the idea that the use of a trade mark could itself engage Art 10 (free speech). Additionally, there was a strongly arguable case that at least one of the heads of infringement would be make out. Therefore, s.12(3) HRA (which states there must be no relief that would restrain publication which would affect the exercise of an ECHR right, unless the applicant is likely to establish that publication should not be allowed) was not satisfied, and interim relief could be granted.
Whether it should be granted depended ultimately on the balance of convenience. After detailing the relevant considerations, the judge concluded that an injunction was in order, concluding helpfully ‘It is very difficult to explain how I balance up the essentially incommensurable considerations outlined above…’ [Indeed, says the IPKat].
On the whole, the IPKat is unimpressed. The judge hasn’t got much further than saying that it’s all very difficult, though that hasn’t stopped him from expressing serious scepticism about whether there would ever be a conflict where free speech would win.The Kat is particularly troubled by the way that the existence of s.10(3) infringement and the free speech issue have been conflated. He hopes this is the beginning of an ongoing dialogue on the free speech/trade mark interface.