Law and legal affairs: lightbulb moment

Published on Sunday 5 September 2010 20:02

Argyll Arcade trade mark registered'in bad faith' LEWIS Grant and Laing the Jewellers (Glasgow) Limited, well-known jewellers operating from the Argyll Arcade in Glasgow, have succeeded in having a trade mark registration for Argyll Arcade declared invalid.

The trade mark had been registered by Argyll Arcade Properties (Glasgow) Ltd in 2007, but the Trade Mark Office agreed the registration had been obtained in bad faith. The Trade Mark Office agreed the Arcade has a reputation associated with diamond and jewellery specialists as a result of the efforts of each of the shops in it and so it was not right that the registration belonged to any one shop. Now that the registration has been declared invalid, the owners of all the properties are free to use the term ARGYLL ARCADE to promote the sale jewellery.

Parasitical advertising escapes court sanction

IN THE recent case of Specsavers International Healthcare Ltd v Asda Stores Ltd, the High Court has ruled in favour of supermarket Asda on most points in its defence of a claim by high street opticians Specsavers over an advertising campaign for Asda's optician business. The campaign included use of very similar logos and of slogans making indirect references to Specsavers.

Specsavers claimed Asda's green and white oval branding was too close to their own. They also objected to the use of Asda's slogans "Be a real spec saver at Asda" and "Spec savings at Asda" which it said was calculated to call to mind the Specsavers chain.

The first claim for trade mark infringement, based on mere similarity of the marks failed. The fact that Asda deliberately followed Specsavers and were "living dangerously" did not hurt Asda's defence to this or to a passing off claim, which also failed because of the prominence of Asda's name on the branding.

The case reflects how hard it is to bring passing off actions to restrain parasitical advertising. It also suggests that, when combined with the Court of Appeal's apparent distaste for the high profile L'Oral v Bellure decision, English courts are not going to make use of a broad interpretation of the unfair advantage infringement clause in the Community Trade Mark Regulation to penalise this aggressive form of competition.

Court of Justice rules on another AdWords case

In July, the Court of Justice of the European Union (CJEU) ruled on the case Portakabin Ltd and Portakabin BV v Primakabin BV in the Netherlands, which involved use of registered trade marks as sponsored keywords. The Defendant, Primakabin, sold and leased mobile buildings, including those manufactured by the Claimant, Portakabin. Primakabin bought Google AdWords "portakabin", "portcabin", "portokabin" and "portocabin" which brought up its advertisement for "used portakabins" as a sponsored link.

The CJEU's ruling may be of concern to trade mark owners as it gives resellers leeway to use another person's trade mark to attract customers to their shops in order to sell other products.

Frank Zappa estate fails in infringement proceedings

THE estate of the late musician Frank Zappa, headed by his widow Gail Zappa, has failed in recent trade mark infringement proceedings brought in Germany against the organisers of a music festival that pays tribute to the late musician.

The annual festival, known as Zappanale, began life as a small underground festival in East Germany in 1989, but has grown to the extent that in 2008 almost 10,000 fans turned up to celebrate the music of Frank Zappa.

The Zappa estate had attempted to claim US $150,000 in damages, however, they failed to satisfy the court that the trade mark has been actively used in Germany. Evidence had been submitted to show the trade mark used on a US hosted website that was accessible from Germany. However, this was insufficient for the German court that ruled that the website has not used the trade mark to sell or advertise products for the EU market and consequently the mark had not been used in trade in the European Union.

Use of trade marks on websites and in domain names is an issue often brought before the Courts. It is clear that relying on access to a website to constitute use in that country will not carry much weight and is no substitute for sales or direct advertising in evidencing genuine use of a trade mark in a given territory.

Lightbulb Moment is compiled by Marks & Clerk LLP.Contact [e-mail] or visit www.marks-clerk.com