Sunday 27 February 2011

Every day I write the book

At last, I have a copy of my book in my hands. Not that it matters that I have it: what matters is that other people have it ... At least I know it really exists.

Tuesday 22 February 2011

Could Formula One be a trade mark?

Gone are the days when you could build a Formula One car in an Essex garage, like Peter Connew did in 1971, hire a competent driver (François Migault in this case) and turn up to take part in a Grand Prix (which actually the Connew didn't do very much). I'm not going to wax lyrical about those days, when one could expect three or so drivers to be killed in the course of a season, but that's not to say I like the commercial circus that grand prix motor racing (or "F1") has become.

Too much is fought out not by the drivers but by the lawyers these days, and the latest case was in the General Court last week when Formula One Licensing failed in opposition proceedings based on their "F1" trade marks against the figurative mark F1 LIVE. I don't know (it's 35 years since I used to read it regularly, and indeed sent off my first ever job application to it) whether Autosport carries regular law reports yet, but here's their story about the case. You might prefer - you might consider more authoritative - the judgment published on the Curia website, T-10/09 Formula One Licensing BV v OHIM.

The story is that Formula One Licensing took exception - several years ago - to F1 LIVE. It based the opposition on the word mark F1 and a figurative mark familiar to anyone who's watched a race on the TV in the past few years. The word mark, the court thought, was going to be perceived as an abbreviation of Formula One, and therefore descriptive, although in these proceedings it couldn't do much about it except to hold that there was no likelihood of the public getting confused. The figurative mark was what the public had been educated to recognise, but it wasn't very like the mark applied for - so again no likelihood of confusion.

I'm afraid it's all Colin Chapman's fault, since he brought commerce into the sport in 1968 with Imperial Tobacco sponsorship and renamed the team Gold Leaf Team Lotus - a trend that continues today with Red Bull not only being the name of a drink but also of a racing team - whose 2009 car (or probably a non-working display model) appeared in the foyer of the RAC on the day of this year's Motor Law conference, taking the place of Jim Clark's 1961 Lotus 18 which had been there the previous night.

Friday 11 February 2011

Who'll buy a business with no trade mark?

From Ireland comes this cautionary tale (though it could equally have come from just about anywhere): the publishers of the Sunday Tribune newspaper, Tribune Newspapers Plc, went into receivership on 1 February 2011. Publication of the paper and its online edition (what should we call an online newspaper? A newsnonpaper?) was suspended while the administrators tried to find a buyer for the business. Last Sunday, the Irish Mail on Sunday produced a special edition with a front page layout described by The Guardian as a "fake" Sunday Tribune front page.

That shouldn't be more than a minor irritant, surely. Can't the administrators sue for trade mark infringement? Well, no, they can't, for the simple reason that the Tribune didn't have a registered trade mark. Like lots of other people and companies. So they could sue for passing off or put together a somewhat contrived claim for copyright infringement (while simultaneously rushing off to the trade marks registry with an urgent application), but that doesn't really do the job. Anyway, what administrator is going to stump up the price of a passing off action, perhaps the most expensive form of litigation known to humankind?

Quite apart from the direct damage done by the Irish MoS, the Tribune must have suffered considerable indirect damage. The search for a trade purchaser is made rather more difficult now the world knows the paper's title isn't protected, or not very well. There might be questions about the conduct of the directors of a plc who allow this sort of situation to arise (though I couldn't possibly comment on Irish company law). Trade mark registrations might be expensive to get (though not very, in the great scheme of things) and involve the owner in continuing expense (watching services, oppositions, renewals, and indeed infringement actions) but businesses need them, and badly. The law enables you to obtain this protection: it's desirable, and for many essential, to take up the offer.

Use of key words may be infringement in US

A federal court in California has held that a legal practice that bought a Google Adword corresponding the name and registered trade mark of a competitor was liable for infringement. The case is  Binder v. Disability Group Inc., C.D. Cal., No. 07-2760 and the story is here (and probably lots of other places too).

Of course, many courts in the US and elsewhere have held that in selling Adwords, Google is not infringing trade mark rights. Like it or not, and I certainly don't that's the legal position. But the advertisers who bid on the Adwords, well, that's another matter - even the Court of Justice has indicated that they might be infringing. The problem is that trade mark owners hoped to get to the root of the problem by stopping Google, and save the trouble of having to pick off lots of troublesome little infringers. So there's not much surprise that the advertisers are infringing, though it's good to have it confirmed, even by a distant (geographically and jurisprudentially) court.

Where's the beef?

The spat over Ferrari's use of the designation F150 for this year's Formula One car,  reported in the US press (WSJ here), is about dilution. Dilution, would you believe, of Ford's F-150 registered trade mark, used for pick-up trucks.

In fact Ferrari weren't using "F150" as the designation of the car, but calling it the F150th Italia, a rather convoluted reference to the unification of Italy in 1861. So they settled on the basis that they would use the full designation only. Whether TV commentators will or not is, I suppose, another matter, but there's not often much need to quote model numbers - there will only be one Ferrari model taking part in the races, after all. The print media might be a different story.

I still don't see how a claim of dilution could hold water. Are Ferrari taking some sort of advantage of the repute attaching to Ford's trade mark? Are you joking? How many examples of this model do you think they plan to sell, anyway? Are they doing something detrimental to it? Quite the opposite, I'd have thought. Does anyone in the US pay any attention to Formula One, especially since that farce at Indy that called itself the US Grand Prix a few years ago?

So (as Garibaldi might have said), where's the beef?

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