Jaws of a dilemma over Katy Perry’s Shark

Loss of trademark is a costly business, writes Colin Hulme

Katy Perrys advisers filed for a Left Shark trademark in the US. Picture: Lisa Ferguson
Katy Perrys advisers filed for a Left Shark trademark in the US. Picture: Lisa Ferguson

KATY Perry’s half-time show at this year’s Super Bowl was made especially memorable for the comedy value of her backing dancer now known as “Left Shark” who appeared to have forgotten his dance moves. However, few of the 118 million viewers will have immediately been alert to the global brand protection issues which would arise for the performer.

Seizing upon the growing fame of Left Shark and the first appearances of unauthorised “Left Shark” accessories, Katy Perry’s advisers filed for a Left Shark trademark in the US for the clumsily dancing shark costume. If granted, trademark protection would grant Katy Perry exclusive use of the Left Shark image in connection with provision of her musical and dance performances.

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Unfortunately for Ms Perry, last month the US Intellectual Property Office has decided that Left Shark does not function to identify her services from those of others – the essential function of a trademark. A trademark must be able to operate as a badge of origin so that, when used, consumers will know the source of goods or services. An obvious example of this would be the Highland Spring trade mark. When a consumer sees a bottle of water with that mark on it, they can be assured that it comes from that company and will therefore have appropriately high expectations of product quality and composition.

No doubt the performer’s ability to realise the global potential value of Left Shark have been significantly hindered. If granted, the Left Shark trademark would have initially had protection in the US but having regard to Katy Perry’s international fame no doubt applications to register the trademark in every potential market for Left Shark accessories will have been planned.

Trademarks are limited in effect to the countries in which they are registered, for example, a US trademark will have no effect on the sale of Left Shark dolls in the UK. When developing a brand and filing trade marks to support it, consideration needs to be given to the territories where you may wish to sell goods and services and plan ahead by filing trademarks there. Fortunately, there is an international treaty, called the Madrid Protocol which operates as a one-stop solution for registering and managing marks worldwide.

By using this protocol, your initial national trade mark can be registered in almost 100 other countries worldwide for a relatively small fee. No doubt Ms Perry’s trademark attorneys would have ensured that the Left Shark mark was launched around the world using this one-stop registration system. Similarly, Scottish businesses which have products which are being exported around the world need to have regard to the importance of their key export markets being protected with trademarks.

Of course, having the trademark registered does not mean you can sit back knowing that your brand is invulnerable to copying. If a foreign market is important enough to your business, it is important to monitor use of your brand in that country. This can be done at various levels from conducting pro-active physical and online market searches to at the very least having “Google Alerts” set up so that you have some visibility of who is using the brand. Many of our clients who feel comfortable that their brand is effectively safeguarded in its home market can be shocked from the results gained from searches on alibaba.com, China’s equivalent to amazon.com.

At this time of year, the international nature of intellectual property work, trademarks in particular, is made obvious with 10,000 trademark professionals from around the world converging at the annual International Trademark Association conference. This week (2-5 May) the mammoth gathering of trademark lawyers will take over San Diego. I will be travelling there to meet up with fellow IP lawyers and trademark attorneys with whom we work in protecting our clients intellectual property across the globe – from Ireland and England to China and Australia.

I hear that Katy Perry is also attempting to obtain trademark registrations for “Right Shark”, “Drunk Shark” and “Basking Shark”. As she clearly has such keen interest in trademarks, we can have some basis to hope she will be headlining at the conference.

Colin Hulme is a partner with Burness Paull www.burnesspaull.com