Sunday 25 March 2012

D and G: David and Goliath?

I just posted this on the Motor Law blog and thought it merited exposure here too ...

Motor Law's friends at Auto Retail Network report how two partners in a Fife-based garage business received a notice of threatened opposition from Dolce & Gabbana when they tried to register their trading name, D + G Autocare. The Italian fashion house claimed that the business, which has nine branches in Scotland, could be confused with it if the trade mark application were allowed to proceed. Are they serious?

The garage business is run by George Simpson and David Hunter, hence the name. Mr Simpson told the Daily Record (which has the story here): ‘it was outrageous. How on earth could a garage that knocks out £35 MoT tests be confused with a company known for its £735 handbags?’ (I see that Mr Simpson spotted the "David and Goliath" analogy - I can only say that I thought up the title of this post before I read the Daily Record website.) Their lawyers replied with what Auto Retail Network called "a stiff rebuttal", leading to a sensible compromise: so long as the garage kept ‘Autocare’ as part of its trading name, the fashion house would withdraw its objections. I can't find the trade mark application online, but I bet that it corresponded to the company name and therefore the "Autocare" part was there anyway, which makes Dolce & Gabbana's threats even less justifiable.

There is protection in the Trade Marks Act 1994 for businesses that just use their own name, even if that name is invented. However, they can only do so if it is in accordance with honest practices in industrial and commercial matters - which would exclude trying to take a free ride on the reputation of an earlier business. Hard to see how the Italians' reputation could help with car servicing in Fife ... Perhaps they just want to monopolise the style "D&G", like so many big brand owners. The Act also protects companies with a local reputation, who can't be forced out of business by trade mark bullies, but they don't have a right to register their trade mark. Fortunately, common sense seems to have prevailed here, but it's such a shame that they should have been put to the trouble and expense. The trade mark system consistently fails the small business community.

Friday 23 March 2012

Princess Caroline's right to privacy

Having just recorded another in my series of short lectures to accompany the London University External LLB subject guide, I have had privacy cases on my mind. In particular, the pronouncements of the European Court of Human Rights in cases brought by Princess Caroline von Hannover (formerly of Monaco) are a bit confusing.

First of all we have VON HANNOVER v. GERMANY - 59320/00 [2004] ECHR 294 (24 June 2004) (the ECHR seems to shout the names of its cases) followed a year later by VON HANNOVER v. GERMANY - 59320/00 [2005] ECHR 555 (28 July 2005). The second judgment is concerned only with the "friendly settlement" of the case which gave rise to the first judgment. Then last month along came (much quieter) Von Hannover v. Germany (no. 2) 40660/08 [2012] ECHR 228 (7 February 2012), and the court seems to have watered down its earlier judgment. It had decided that freedom of expression (Article 10) does not prevail over privacy (Article 8) unless the individual concerned held some public office. Has the complainant a reasonable expectation of privacy, assessed objectively? If they do, there can be liability for misuse of personal information.

So far, so good, and very vague. The new case arose out of the same episode, in which the Princess and her husband complained about the German courts not granting them an injunction against photographers who took pictures of them without consent. The ECHR decided that the German courts' failure had breached the princess's human rights. The new proceedings involved photographs of the couple on a skiing holiday. This time the court took the view that they had to be regarded as public figures and that provided the media struck the right balance (which it believed they had done) the right to privacy was not infringed. The earlier judgment had attracted considerable criticism from the media, and from anti-censorship groups: the new one has been received as redressing the balance. The difference lies in the fact that in the later case the photos were used in articles which discussed the behaviour of the children of the late Prince Rainier, who at the time was seriously ill, and this elevated the press coverage to a matter of public interest. That strikes me as a rather feeble excuse, but a product of modern celebrity-obsessed journalism perhaps. Were the photos in any way essential to the telling of the story? Hard to imagine that they were. The fact that the photos were all taken in public places also had a bearing on the outcome.

Zara apologises for misuse of Harris Tweed

My school uniform included a Harris Tweed jacket, so I was introduced at an early age to the protection given to that designation - although I don't believe I understood what it was all about at that time. I did, however, appreciate the qualities of the tweed itself - it stayed looking remarkably smart despite boarding school life. I have never since had any desire to wear a herringbone-pattern tweed jacket, though. School can do that sort of thing to you.

The Harris Tweed Authority owns four certification trade marks, one dating back to 1909. The Harris Tweed Act 1993 empowers the court to grant an injunction (or, in Scotland, and interdict) against anyone dealing in non-authentic - "authentic" meaning hand woven, in the Hebrides, from virgin wool - "Harris Tweed". That's a powerful supplement to a certification trade mark, although there are no criminal penalties under the 1993 Act. It seems recent in time, at least to one of my age, but of course it predates the Trade Marks Act and the criminal sanctions introduced there.

The Authority has recently, according to The Lawyer, been busy extracting an apology from Zara, the fashion house, which had been marketing through its online arm a garment which it described using the expression "Harris Tweed". Not a good idea, though they seem to  have got off with just making an apology. With a brand like that, the Authority has to be on-the-ball and ready to take 

Monday 19 March 2012

Support for old software

Rob Addy, on his Gartner blog, raises an interesting question about extended support fees for software. We are talking here about support for old versions of software, and the way support and maintenance fees are structured has always looked to me like a racket designed to push reluctant users into upgrading. I am annoyed when my new computer, running Windows 7, won't speak to an old inkjet printer or run ViaVoice Millennium Edition. What's that all about? It's about Lexmark and IBM (and others) trying to make me buy stuff I don't need (because I have stuff that works fine for me) and can't afford. Thank goodness Windows 7 has an XP emulator.

A client of mine, or rather of my old firm's, or rather of the firm where I used to work, always argued that maintenance charges should go down over time, not up as they invariably do. When you're talking about old versions, the case must be even more compelling - the bugs have been ironed out, the users know their way around the program, the cost of keeping it running is minimal.

But don't read me rambling on about it - read his original posting.

On Hobbits and vested rights

The Hobbit pub in Southampton has been attracting a lot of attention recently. Which is why someone chose to call it after the Tolkein character in the first place ... and that is the point of this posting. But before I get to the point I need to wander around a bit.

The pub has borne the name for 20 years, and the film company that now asserts its trade mark rights has owned them for rather less time. There must be a strong argument for the pub having an established use which would defeat a claim for trade mark infringement. The film company has reportedly offered it a licence at the princely rate of $100 per annum, which I reckon falls into the "offer you can't refuse" category, because the alternative would be to be tied up in expensive litigation for years - though it's backed up with something more than menaces: I would not like to rely on prior use if I had such a shaky right to use the sign in the first place. 20 years ago, even with character merchandising in a much less developed state, the Tolkein estate would surely have had a pretty strong claim that passing off was taking place.

And that brings me to the point. That superb resource,, reports the landlady of the pub (who, in one of those peculiarities of English language, is in fact the tenant, and who being 41 can have had little if anything to do with the naming of the establishment) protesting that "[i]t was never our intention to steal or profit from work written or created by someone else and we do not feel we have." Well, leaving aside the fact that the word "steal" is completely out of place there, consider the second part of this statement. It was never their intention to profit from the Hobbit? Then what did they think was going to happen? The thought process that led to the naming of the pub (which, incidentally, should not be confused with the Hobbit Hotel in Sowerby Bridge) must surely have included the idea that the name would bring in custom that might not be brought in were it to adopt a name like the Royal Oak or the King's Head (the pub apparently took over premises occupied by a hotel which closed in 1989, but history does not seem to record what it was called). That, however innocent the motive might have been, amounts to an intention to profit from the association, to take an admittedly short free ride on the reputation and, dare I say, goodwill, generated by JRR Tolkein in (inter alia) that character.

Oh, and let's think about the last few words of her statement. They might not think they have profited from Tolkein's work - but it's no defence to a trade mark infringement to argue that it didn't work. If in fact the pub has not profited from the association, that will only sound in damages.

Whether or not the film company is the evil bully it is cast as is another matter. Until the terms of the licence are publicly known it is impossible to say, but a royalty of $100 a year suggests, refreshingly, that it isn't.

A trade mark case I couldn't resist ...

Runners Point's application
A Community trade mark case decided by the General Court a few weeks ago that definitely speaks my language - but a very unedifying decision it is. The Court decided, in Case T-64/11, that the sign above (the subject of the application, filed by Runners Point Warenhandels GmbH), was not similar to the CTMs below (registered by Run2Day Franchise BV) or to the RUN2DAY word CTM. The Board of Appeal had cancelled the Opposition Division's decision that there was a likelihood of confusion decision and rejected the opposition.

Visually and aurally the Board thought that the signs were relatively similar, but conceptually there were big differences. In particular, the Board thought that the “2” element was conceptually different, even if the average consumer might not understand exactly how. That seems to me to be predicated on an ignorance of mathematics consistent with a Daily Mail view of the education system: but then again, the idea of raising a physical activity to the power of two creates a likelihood of a different type of confusion. My old maths teacher, who would rate a wrong answer as "good enough for an engineer", or, if wildly wrong, a vet, might have been tempted to say "good enough for a trade mark lawyer".
Run 2 Day's figurative CTM
The Board also thought that the earlier marks have a weak distinctive character because they both use the descriptive word “run”. When you consider that as well as the differences, the Board thought there was enough to exclude confusion. In addition, the figurative trademarks present even more differences.
Run 2 Day's figurative Benelux trade mark
The General Court annulled the decision of the Office, drawing a distinction between the exponent and the cardinal number, and assuming a knowledge of mathematics on the part of the relevant public much greater than that assumed by the Board. Thank goodness for that.

As for the value of the word RUN, the Board had contradicted itself by holding in paragraph 17 that the element RUN had to be considered identical, even though it was written in different case, but in the next paragraph suggesting that the case difference was important in the visual comparison. Finally, the Court said that Runners Point's sign will be read ‘RUN TOO’ or ‘RUN SQUARED’ by part of the relevant public while the earlier marks would be read ‘RUN TODAY’ (the Court called it a "jeu de mots", but it's a pretty exiguous one). It thought that the word ‘run’ could not be held insignificant in the comparison of the signs. As indeed it cannot, but if that's the best that can be said about a trade mark it's not a very good one, is it? The reason it's not insignificant is that all the signs involved are (IMHO) so pathetic.

The Court was also persuaded by the differences between the applicant's sign and the opponent's figurative marks, which had a lot more characters in them.

As far as the opponent's word trade mark was concerned the Court said:
... s’agissant de l’examen de la similitude visuelle, phonétique et conceptuelle entre la marque demandée et la marque verbale antérieure, la chambre de recours a commis des erreurs qui affectent le degré de similitude constaté des signes en conflit et vicient, par conséquent, son appréciation globale du risque de confusion opérée dans la décision attaquée.
The Board  made errors concerning the degree of conceptual similarity between the earlier word mark and the application, and these errors vitiated (nice word, ought to use it more) its global appreciation of the risk of confusion. So the Court upheld the opposition. It's a little difficult to disentangle the issues of similarity and confusion, especially with the Court's judgment being in French, but I think that quote helps.

But there are so many questions unanswered here. Why should any running shop be able to register a trade mark comprising, in large part, the word RUN? Should these marks not all have been rejected as too descriptive, or even as devoid of distinctive character? There would be a great deal less clutter on the register if, to use an unrelated athletic metaphor, the bar were set higher. Better to exercise your mind a little and come up with something original and memorable, or even inspired, like Sweatshop (which is, incidentally, registered on the basis of acquired distinctiveness to overcome an objection that it is descriptive of goods produced in a sweatshop. The mind boggles. As if anyone would build a brand on that proposition!) Why are Dutch and German companies addressing their customers in English, anyway? And finally, what happened to the apostrophe in the German company's name? If you're going to give yourself an English name, then at least get it grammatically correct!

Unjustified threats in Australian copyright law

Are they actionable? It seems so, according to this report via Mallesons' always-interesting Whiteboard IPblog. Does this mean that Australian law gives a remedy unknown in our copyright statute? Not entirely clear - but what does come through in this report is that an injustice was perpetrated by someone laying claim to rights in a work that rightly belonged to someone else. That seems to have been what the court decided, in which case it is just the sort of unpleasant bullying that the intellectual property system encourages. As the rights become more valuable, and the costs of enforcement become greater, the abuse of IP rights develops into a bigger and bigger problem.

Soon, far from encouraging creativity and inventiveness, IP litigation will take up all the time that people would otherwise devote to such useful activities.

Too many solicitors?

RBS, of all the greenhouse-occupiers in the world who should take care about throwing stones, say that the profession should shed about 5 per cent of its numbers (so Legal Week tells us). How come? There is massive unmet legal need, and reducing the number of people who can deliver the services for which, at the right price, there is so much demand, hardly addresses the real problem. In fact, the suggestion could probably only have come from Planet Banker.

How many times over could the hole in the provision of legal services have been repaired with the money thrown into the banking money pit?

Indeed, how many solicitors could (should) be gainfully employed pursuing claims against the banks whose recklessness has caused so much misery?

And what percentage, pray tell, of bankers would we be better off without? Come to that, how many ex-bankers, or those who would a few years ago have become bankers, are now trying to enter the legal profession?

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