IP Round Up 2022
‘Del Boy’ Character Protected by Copyright
In a recent judgment in Shazam Productions Ltd v Only Fools The Dining Experience Ltd it was held that copyright subsisted not only in the original Only Fools’ scripts, but also in the character of Del Boy himself.
In respect of the scripts, it was held that copyright subsisted for each script in the form of a dramatic work under section 1(1)(a) of the Copyright, Designs and Patents Act 1988 (“CDPA”), nonetheless, the world of Only Fools’ did not comprise a literary work for the purposes of the CDPA, nor were the body of the Only Fools’ scripts intended to be regarded as a literary whole.
Turning to Del Boy, the judge commented that there was no precedent in English law to determine whether copyright subsisted in an individual character. The judge therefore adopted the following criteria to determine whether Del Boy should be regarded as a protected character in copyright:
(1) Originality – in the sense of the subject matter being the author’s own intellectual creation; and
(2) Identifiability, in that the subject matter was expressed in a manner which made it identifiable with sufficient precision and objectivity.
Applying the above criteria, the judge held that the Del Boy character had satisfied them and it is protected by copyright.
The basic principles of copyright infringement were then applied in the case, and it was deemed that the infringement was in fact “overwhelming and obvious”. The scripts used in the Only Fools’ Dining Experience constituted “far more than the substantial copying required for a finding of infringement”.
The judge also rejected the Defendant’s arguments based under section 30A CDPA which concerns work involving a parody of the original works. The judge commented that, to the extent that the Dining Experience’s scripts were humorous, this humour in fact originated from the borrowed material, and was not noticeably different to that of the original Only Fools’ scripts.
It is not currently known whether the case will proceed to appeal, but we will keep you updated.
For more on this topic, read the press article here.
Mickey Mouse – Steamboat Willie to Enter Public Domain in 2024 Following Expiry of Copyright
Reaching the world-wide news recently was the fact that the original 1928 short film – Steamboat Willie, directed by Walt Disney and UB Iwerks, will soon be losing its protected copyright status, meaning that the original Mickey Mouse will soon be entering the public domain.
The copyright protection in the short film is due to expire at the end of 2023, meaning that it will enter the public domain at the beginning of 2024.
Steamboat Willie was originally protected for a period of 28 years, renewable for a further 28 pursuant to US copyright law at the time. This 56-year period was then further extended following a change in US copyright law in 1976, to 75 years (meaning the film was then protected to 2003). A further law change, dubbed by many as the Mickey Mouse Protection Act, further extended the protection to 96 years, and this period is now due to expire in 2023.
Although a headline story, the practicalities of the 1928 short film entering the public domain in 2024 are far less revolutionary. The 1928 Mickey Mouse was far from the red-shorts, yellow-shoes and white-gloves character we grew up with – instead a black-and-white Mickey with no gloves will be the version released into the public domain in 2024. Anyone wishing to take advantage of the 1928 work will therefore need to be careful to stick to the 1928-spec Mickey, to avoid encroaching into other protected works (such as later variations of Mickey Mouse, which will have their own copyright protection).
In addition, although copyright on the 1928 Mickey will cease to continue, anyone wishing to use the name ‘Mickey Mouse’ as branding for goods or services will remain subject to the various trade marks that Disney own in respect of those words around the world. Unlike copyright, these trade marks have not expired.
In the UK, copyright in most works are protected until 70 years after the death of the author pursuant to the Copyright, Designs and Patents Act 1988.
To read the full press article, click here.
Donut King’s Opposition to an E-Cigarette Trade Mark Application Fails
The application to register a trade mark in the form of a logo entitled “DONUT KING ELIQUIDS” (No UK00003556512), made by Serge Davies on 16 November 2020, was opposed by Donut manufacturer, Donut King at the UK IPO.
Donut King Franchise Pty Ltd (Donut King) were the proprietors of an earlier international trade mark (No WO0000001260639) registered in classes 29 (milk products), 30 (goods including doughnuts and hot and cold beverages) and 43 (restaurants/takeaways). This international trade mark was granted protection in the UK on 12 November 2015.
Donut King opposed the application on the following grounds:
1. The mark was similar to their earlier trade mark, and therefore likely to cause confusion (which is a relative ground for refusal under section 5(2)(b) of the Trade Marks Act 1994 (“TMA”));
2. The earlier trade mark had a sufficient reputation that the registration of the new trade mark would take unfair advantage of, or be detrimental to, the reputation and distinctiveness of the earlier mark (section 5(3) TMA); and
3. The trade mark constituted ‘passing off’ for the purposes of section 5(4)(a) TMA.
The above grounds were rejected the by the UK IPO for the following reasons:
1. Although there was deemed to be some degree of similarity between the trade marks (in respect of conceptual and aural similarities), section 5(2)(b) also requires evidence of similarity between the goods or services associated with the trade marks. Often, a lesser degree of goods and services may be offset by a greater degree of similarity between the trade marks. Nevertheless, the registrar commented that it is still necessary to adduce evidence of some similarity between goods or services – a position supported by case law. As such, with the registrar confirming the absence of any similarity between the goods or services, the section 5(2)(b) ground failed accordingly.
2. Whilst it was accepted that the trade marks were similar, to succeed under section 5(3), Donut King would need to prove the earlier trade mark was known to a significant part of the relevant public in the UK (thus earning sufficient reputation in the UK). It was ruled that, although extremely popular in Australia, the company had little reputation in the UK, save for local trade and a small social media following. Without a qualifying reputation, it was decided that no link would have been made by the public between the trade marks, and therefore there would be no confusion or detriment to repute to Donut King. For these reasons the section 5(3) ground failed.
3. In relation to the passing off ground under section 5(4)(a), Donut King’s reputation and goodwill in the UK was considered. It was decided that Donut King did not possess sufficient goodwill in the UK at the application date of the new trade mark, and, even if this were not true, “the level of goodwill in a business distinguished by a sign low in distinctive character for the goods and services, would be too small considering the distance between the parties’ goods and services to give rise to any misrepresentation”. The section 5(4)(a) ground failed accordingly.
This case demonstrates that a brand, regardless of its size or reputation outside of the jurisdiction, will need to display sufficient reputation or goodwill in the UK (for UK trade marks) if it is wishes to oppose similar trade marks under reputational damage or passing off grounds. Further, regardless of the visual, conceptual or aural similarities between trade marks, it is necessary to adduce evidence of similarity between the goods and services if a company wishes to oppose a similar trade mark under section 5(2)(b).
A full copy of the decision on this opposition can be found here.
“Welsh Cake”, “Cariad” and “Hiraeth” Registered Trade Marks Surrendered
In other, closer to home news, the registered trade marks “Welsh cake”, “Cariad” (“love”, “darling” in Welsh) and “Hiraeth” (“longing for home” in Welsh) were filed at the UK Intellectual Property Office (“UK IPO”) in November 2021 by candlemaker, the Handmade Welsh Candle, owned by Fizzy Foam Ltd, and successfully registered in March 2022.
The trade marks were all registered in class 4, in relation to various types of candles.
The registrations made the national news in Wales, with reports that rival candlemakers were said to have been angered by the UK IPO’s decision to register the trade marks with some arguing that the words were commonly used in every day language and others saying that they were using the same words to describe their candles for a while. It is worth noting that a successful trade mark registration effectively prevents others from using an identical or similar mark in respect of identical or similar goods within the same jurisdiction (in this case, this would cover the whole of the UK). The registrations were therefore expected to be challenged by third parties on various grounds.
In the latest development, earlier this month all three registered trade marks were surrendered by the owner. The UK IPO does not publish the reasons for the surrender, hence why we are not in a position to offer a detailed commentary, however, it would appear that this decision may have been influenced by the risk of potential challenges to the registered trade marks and related proceedings before the UK IPO.
It is worth noting that the proceedings before the UK IPO are significantly cheaper than litigation proceedings and the risk of being exposed to paying the opponent’s costs is capped, however, depending on their complexity, they can still prove to be an expensive route for the parties involved. Where possible, exploring amicable solutions with an experienced legal team is therefore advisable.
House of Zana wins Zara trade mark battle
Darlington-based clothing shop House of Zana, which is run by Amber Kotrri, has successfully defended an opposition to its House of Zana trade mark application (No UK00003569173) in Class 25 in respect of clothing from high-street clothing giant – Zara.
The opposition was brought by Industria De Diseño Textil, Sociedad Anonima (“Zara”) in February 2021 following an application by Ms Kotrri on 17 December 2022 to register the above trade mark. Zara relied on its two UK trade marks (UK00001574846 and UK00002166165) and its two EU trade marks (000112755 and 008929952), all of which are represented by the plain work “ZARA”.
The opposition was brought under two grounds; sections 5(2)(b) and section 5(3) of the Trade Marks Act 1994.
Section 5(2)(b): Zara claimed that the House of Zana trade mark was applied for in respect of identical goods (clothing) and highly similar (conceptually, visually and aurally) to its ZARA mark, and that this similarity would lead to confusion as to the origin of the goods. In addition, Zara claimed that the confusion is all the more likely as they enjoy extensive reputation in the UK and EU and therefore posess an enhanced level of distinctive character.
Section 5(3): Zara again stated their extensive reputation in relation to clothing and retail, and claimed that consumers would think of the ZARA mark when seeing the House of Zana mark. This confusion was claimed to likely lead to injury by (1) taking unfair advantage by free-riding on the coat-tails of Zara; (2) causing detriment to the reputation of the ZARA mark; and (3) causing detriment to the distinctive character of the ZARA mark.
The hearing officer, on hearing the arguments, decided the following:
Section 5(2)(b): The goods against which the House of Zana trade mark is to be registered are identical to the ZARA trade mark. The ZARA trade mark distinctiveness had been enhanced to a high/very high degree in relation to clothing goods by the time the application for the opposed trade mark was filed. In respect of similarity between the trade marks, there was said to have been some degree of similarity on all fronts (visually, aurally and conceptually), but that the trade marks should be taken as a whole (i.e. not just ZARA and ZANA). On turning to the likihood of confusion as to the origin of the goods, the hearing officer decided that such liklihood was non-existent, and the ground therefore failed.
Section 5(3): It was accepted by all that Zara had built up sufficient reputation. Further, given the similarities between the marks, the hearing officer commented that a mental link between the ZARA trade mark and the House of Zana trade mark may arise, at least for some. Turning finally to injury, the hearing officer decided that (1) the degree of similarity was not so strong to mean the customer would be more likely to make a purchase from the applicant; (2) there was no evidence that the Applicant’s goods were of inferior quality which could lead to damage to the reputation of the ZARA mark; and (3) there was no serious risk that the distinctive character of the ZARA mark would be diluted by the House of Zana mark. For these reasons, the ground failed.
As such, the Zara opposition failed, and the hearing officer confirmed the House of Zana application should proceed to registration.
For more information, or to read the full IPO decision, please use the links below:
Lightning-Bolt US Trade Mark
Hitting the news most recently was the revelation that eight-time Olympic gold medallist Usain Bolt was applying to register his ‘Bolt Logo’ trade mark in the US.
Despite the headlines, this isn’t the first time the Bolt logo has been registered as a trade mark. The Bolt logo has actually been registered in various jurisdictions around the world for a number of years. The earliest Bolt logo to be registered in the UK was filed on 6 November 2009, claiming priority from two Jamaican registrations for the same logo. This was registered in a number of classes of goods including glasses, jewellery, watches, paper goods, shoes, clothing and games.
The new application, received by the United States Patent and Trademark Office on 17 August 2022 (available here), seeks to be registered against a number of different types of goods and services including classes 9 (glasses), 14 (watches/jewellery), 18 (bags), 25 (footwear and headwear), 28 (games), 41 (entertainment) and 43 (restaurant services).
The application claims priority from 4 trade mark registrations in Jamaica, meaning that the Bolt logo is already registered in respect of these goods and services Jamaica (and likely other jurisdictions around the world). The famous athlete is therefore taking full advantage of the world-famous brand he has built for himself even after his sporting-career has finished.
For more on this topic, read the press articles linked below:
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