IP in the news
An overview of the latest intellectual property news stories.
Lime Pictures, the company which produces “The Only Way Is Essex”, called in its lawyers to object to the name of a local Essex chip shop “The Only Way is Fish” which opened in March 2014. Lime Pictures’ lawyers wrote to the shop owner stating that it was in breach of the company’s copyright by using the same name as the show but with the word “Essex” replaced for “Fish”. The shop owner fought back accusing the company of a human rights infringement. The dispute lasted several months, however, proceedings were not issued and the dispute settled following the shop owner agreeing to change the sign, which had a similar logo and design as the show’s sign, but retaining the name of the shop.
Clothing brand Jack Wills, which has a pheasant logo registered as a UK and Community trade mark for clothing, has won its case in the High Court against House of Fraser, which was found to have infringed its trade mark by use of a similar pigeon logo. A likelihood of confusion between the logos was established due to a number of factors including the degree of attention paid by, and the identity of, the average consumer, the identity of the goods, the distinctive character of the Jack Wills logo and the similarity between the logos, particularly their conceptual similarity. The key problem for House of Fraser was that it had not just used a logo of a bird, but had adorned it with human accessories, which was the unique feature of the Jack Wills logo. The Court also found that House of Fraser had taken an unfair advantage of the reputation of the Jack Wills trade marks. This case is a clear example of a defendant crossing a fine line in taking advantage of an established brand.
US fashion brand Polo/Lauren has been successful in its opposition case as the EU General Court has dismissed an appeal brought by a Portugal-based company for a Community trademark depicting a polo player. The Court confirmed the likelihood of confusion between the mark applied for and earlier registrations owned by the Polo/Lauren Company, and that in respect of certain goods and services, use of the mark applied for would be detrimental to the repute of the earlier marks. In assessing the likelihood of confusion between the marks the distinctive character and reputation of the prior Lauren marks was of particular importance.
Deadmau5 (a.k.a. Joel Zimmerman), the Canadian music producer and performer, received a cease and desist letter from Ferrari requiring the de-customisation of his Ferrari 458. Earlier this year Zimmerman had de-branded his Ferrari and affixed a wrap in the design of the Nyan cat with a ‘Purrari’ badge and the image of a prancing cat on the bumper. He then drove the car in a 2014 rally from Miami to Ibiza and afterwards offered the car for sale.
The letter came to light when Mr Zimmerman aired his frustrations at Ferrari’s sense of humour failure on social networking, but only after he had “de-customised” the vehicle. Whether in fact Mr Zimmerman had done anything wrong is another question. Vehicle wrap are, of course, lawful in the UK and often used by businesses for advertising purposes. Consumers are unlikely to see a link between them and the brand of the car. For Ferrari to have made a case against Mr Zimmerman, they would have had to prove that by offering the car for sale with the ‘Purrari’ badge and the prancing cat images, the ‘Purrari’ was being sold, or endorsed, by Ferrari or a commercially-linked entity. Alternatively Ferrari could have argued that the use of ‘Purrari’ was detrimental to the Ferrari trade mark and the customisation was liable to damage its brand through dilution (making its trade mark less capable of distinguishing its cars from other manufacturer’s cars), or tarnishment (reducing the trade mark’s power of attraction because of a negative impact on it). As the chances of the Purrari ever being repeated are probably slim the issue of the correctness of Mr Zimmerman’s action will remain a subject of debate.