Two Apples, a Football Tournament and a bunch of Trademarks
By Ian Cockburn1
Case 1: A Tale of two Apples…….
Two recent Judgments, one an English HC decision1, the other a ruling before the German Federal Supreme Court2, highlight some of the basic requirements for obtaining a registered trademark and the scope of protection afforded by that registration. The Rulings also teach us that Trademarks need to be distinctive and give us some rules as to how we should use Trademarks to protect the specific goods and services to which they are applied.
Fundamentally, these decisions reinforce some of the basic truths about Trademarks. That is, that ultimately all Trademarks are relevant to trade, to commerce and to business. They are not monopolies over chunks of language, or over an entire market. Descriptive language is free for all to use – as is language which is used descriptively and not used in the course of trade as a means of distinguishing one traders good from those of another.
In the first case of Apple v Apple it was found that there is no risk of confusion between two similar Apple logos (marks); that ipod users are aware and computer savvy bunch, and that both Apple marks can co-exist in the music industry - albeit in relation to separate areas within the trade. The moral of the story is that Trademarks are bound to the good and services to which they are applied or in relation to which they are used and to the particular trading channels, in which they are bought and sold.
Also, and refreshingly, the Judge has also ruled that consumers have brains and are not easily misled. That is, they frequent the real world and not one that is populated by Trademark attorneys or corporate advertising people.
Having said this, may I first provide you with a little background. The present case involved the claimant Apple Corp (famously the Beatles record label) and the defendant, Apple Computers, an equally well-known producer of computers and software.
In this case, Apple Corp complained that Apple Computers “has broken, and intends to break, an agreement made between the two companies in October 1991 which regulated the use of their respective marks in respect of various areas of activity or proposed activity.” Specifically, Apple Corp claimed that the US firm had an agreement ensuring there would not be two Apples in the music industry…. Or so they thought.
But Justice Edward Mann ruled that the Apple Computer Company used the Apple logo in association with its store, not the music, and so was not in breach of the agreement. That is, the iPod and iTunes did not infringe the trademark because they are both merely ways of conveying music and have nothing to do with the creation of the actual music itself. The conclusion reached was that the area of trade covered by the agreement had not been encroached. This ruling in effect means iPods and iTunes will still be able to carry the Apple name and logo.
Justice Mann in a further passage said that iTunes was "a form of electronic shop" and the presence of the Apple Computer logo on the service did not suggest "a relevant connection with the creative work [itself or the process of creating the work]". He also intimated that consumers in this trading channel would not be easily confused. "I conclude that the use of the apple logo ... does not suggest a relevant connection with the creative work," he wrote in his judgment. "I think that the use of the apple logo is a fair and reasonable use of the mark in connection with the service, which does not go further and unfairly or unreasonably suggest an additional association with the creative works themselves."
Finally, it was found that Apple Corps must pay Apple Computer’s legal bill which may be as much as £2m, although Justice Mann refused a request for an interim payment of £1.5m pending further court hearings.
This Apple Court Victory comes after a series of reversals where it had previously been decided that use of the apple logo in relation to music was an infringement of the Beatles Exclusive rights. The war between the two apples has been waging since 1981, and looks likely to continue. Neil Aspinall, a spokesman for Apple Corps stated that “With great respect to the trial judge, we consider he has reached the wrong conclusion”. Apple Corps. will appeal the decision.
Case 2: You say Football, I say Fussball – lets call the Whole Thing Off…… FIFA Trademarks and the World Cup 2006
This case involves FIFA – the Football World Cup organising committee attempting to monopolise the words FUSSBALL WM 2006 and WM 2006 for Goods & Services relating to “organization of sporting events, namely football world championships”.
However, in a series of decisions ultimately ending with the German Federal Supreme Court it has been decided that the marks FUSSBALL 2006 and WM 2006 are lacking in the necessary distinctive character required to gain Trademark registration and are descriptive references to the World cup. This is an important finding and a major set back for FIFA as it allows all traders to use these terms on their goods and for their services and consequently take advantage of the Football world cup in their efforts to market and advertise their products. The court ruled emphatically that the terms are free for all to use and should remain available to the general public to describe the event and products & services surrounding the event using these terms without restriction.
In its decision, the Court agreed that the terms were descriptive of the Football World Cup 2006 and for services relating to it. Such services will commonly involve travel and booking agencies, advertising, media services and generally to services associated with commercialising the World Cup. Consequently, the FIFA marks have been cancelled and the terms are now publicly available to those trading in sports goods, footwear, clothing, promotion, travel, and advertising and importantly to those selling souvenirs of the event.
There is one outstanding matter to be addressed, that being the use of the mark WM 2006 in relation to merchandising of certain goods not covered above – so those few traders that are affected, such as butchers, restaurant proprietors, shopkeepers and hoteliers please take note – as this matter is still to be decided.
It is important to learn from these decisions that no matter the size of your company or its influence you cannot capture language, which is descriptive, nor can you monopolize an entire market simply by registering a Trademark. The Brand needs to be protected, nourished and be aware of an often changing market. Brands you see don’t just stand still, they can evolve and managed – but just as easily they can wither and loose their lustre.
So, for SME’s, Start-ups and those wishing to gain a foothold into a market it is imperative to create a trademark, which sets your goods and services apart from your competitors. This is why nearly all of the successful long-term businesses have trademarks, which are either invented words, or words, which have no relationship to any characteristic of the product or service.
If you have any thoughts, comments or additions to the above discussion please e-mail * icockburn@piperpat.com to begin a dialogue, or conversely consult an IP professional to determine best fit branding strategies for your firm.
Disclaimer: PIPERS endeavors to be as accurate as possible when preparing its articles and has taken all reasonable steps to ensure that the information contained herein is accurate. The contents of this article are for purposes of information only. If you require any clarification, please seek the advice of an IP professional or contact http://www.piperpat.com/
1 The author is Web Editor, Manager Advertising & Marketing at PIPERS - Global, A Patent attorney Firm with Offices in the United Kingdom, New Zealand, Australia, Singapore and Malaysia. The views expressed in this article are those of the author and do not necessarily represent those of the SME's division of WIPO.
1 Apple Corps Ltd V Apple Computer Case Nr HC 2003-C02428
2 Joined Cases 32 W (pat) 238/04 and 32 W (pat) 237/04, August 3 2005.
