The Doctor's trademark success story investigated

FORTY years after his creation, Dr Who still appears to be getting into scrapes. His most recent battle, however, bears little resemblance to the epic confrontations with the Daleks, although to most observers it is just as bizarre.

Since 1996, the BBC - owner of the rights to the Dr Who series - has been involved in a dispute with the Metropolitan Police Authority over their respective rights in the Tardis trademark. As well as the obvious questions as to why two publicly-funded bodies should get involved in such a dispute, the case also raises interesting points about what trademarks are, and who should be allowed to own them.

The BBC adopted the traditional blue police box as the shape of its "Time and Relative Dimensions in Space" machine, or Tardis, in 1963. An ordinary police box outside, inside it was deceptively spacious. The Tardis, of course, allowed Dr Who and a variety of assistants to travel backwards and forwards through time. For more than 30 years, the BBC used the Tardis - that is, the Tardis trademark - freely.

In 1996, the BBC applied for a registered trademark for the Tardis, which would allow it a monopoly over the use of the Tardis image in relation to goods and services including video games, software, clothes and films.

On hearing of the application, the Metropolitan Police raised an objection with the Trademarks Registry, arguing that it owned the Tardis trademark and the BBC was infringing its rights by applying for a trade mark in its own name. The Met also argued that the BBC was only able to use the Tardis in the first place because of a permission to do so granted by them in the 1960s.

The dispute in this case goes right to the essence of what trade marks are. Was the police telephone box really a trademark of the Metropolitan Police? If the answer was yes, would the BBC’s use of the Tardis mark infringe the Metropolitan Police’s rights?

A trademark is, at the basest level, a sign that someone applies to goods or services which distinguishes them, in the mind of the customer, from goods and services which are otherwise similar. Could the Met really claim its police telephone box was a "sign" in the same way that the Coca-Cola name is a sign?

The Trade Marks Registrar decided the general public would not think of the police telephone box in this way. He stated: "I am not prepared to accept that the public would recognise it as a badge of origin [i.e a sign] of the Metropolitan Police."

He then took the logical leap of finding the BBC was not infringing the Met’s rights in applying for a trade mark.

Given that the registrar found the Met had no trademark in the legal sense, the issue of confusion between the BBC’s mark and the police’s mark did not arise.

However, the registrar pointed out that any intellectual property rights the Met might have in the police telephone box would be limited to the field of law enforcement, entirely distinct from the fields of use that the BBC had applied to register its trademark in.

A number of useful lessons can be drawn from this. The Met argued it had given a limited permission to the BBC to use the Tardis mark, and the BBC had exceeded this permission. But it could produce no evidence to back up this claim. Had it been able to do so, the result might have been very different.

Thus, if one company is permitting another to use part of its intellectual property, it is imperative to get a formal licence in place, even in a relatively short form.

It is also important to assess intellectual property to consider what areas have value, and to protect them accordingly. Had the Met done this, it might have gained the advantage by making the first application for registration.

It is also important to understand what trademarks are and how they work: had it thought the issues through, the Met would have been able to predict the outcome of this case.

The final lesson, of course, is one the Daleks learned the hard way: The Doctor always wins in the end.

Graeme Colquhoun is a solicitor in the technology unit of law firm McGrigor Donald, a member of KLegal International.