Does use of a trade mark within the UK constitute valid use within the EU to evidence enhanced distinctiveness of an EU trade mark?
The judgement of the Shopify vs Shoppi case has important implications for UK trade mark owners.
Sir Sean Connery has successfully trademarked his own name in the UK, EU and US. The James Bond star’s name has been registered under a wide range of goods and services classes and will allow him to market many types of products such as DVDs, books, games, clothing, cocktail shakers, drinking glasses and more.
Registration of a person’s name as a trademark can allow that person to build a brand around themselves through providing financial benefit from licensing agreements and merchandising, while simultaneously controlling third party usage. As such, it is a move that is increasing in popularity among celebrities, with the likes of David and Victoria Beckham, Kylie Minogue, Kylie Jenner and 50 Cent among those attempting to take advantage of this commercial resource in recent years. David and Victoria Beckham and Beyoncé and Jay-Z have also filed trademarks for their children’s names.
An additional benefit of trademarking a name comes from the possibility to overcome so-called “cybersquatting”, that being where a “cybersquatter” attempts to charge a celebrity large sums of money to transfer ownership of a domain name they have previously registered that is similar to the celebrity’s name, solely for this purpose. In this situation, an active trademark can help the celebrity to gain control of the web domain through legal action.
In the US, the Anti-Cybersquatting Consumer Protection Act 1999 entitles a trademark owner to damages and allows them to gain ownership of the domain name, if it was registered with a bad faith intent to profit and is identical or similar to the trademark (as long as the trademark is distinctive).
In the UK, there is no legislative equivalent to this Act, however there are similar ideas at play. For example, in the One in a Million Case, the Court of Appeal described these types of domain names as “an instrument of fraud” and held in favour of companies such as Marks and Spencer and British Telecommunications.
The ICANN Uniform Domain-Name Dispute-Resolution Policy (UDRP) makes remedies available to trademark owners for top-level domains (.com, .net, .org etc.), providing the domain name is identical or confusingly similar to the trademark, was registered and is being used in bad faith, and the registrant has no rights or legitimate interests in the domain name. The Nominet Dispute Resolution Service Policy deals similarly with .uk domains (.co.uk etc.).
Along with demonstrating just one of the many useful applications of an active trademark, this article also highlights the importance of taking care when choosing web domain names, such as carrying out a trademark search prior to registering one.
It is therefore clear to see another way in which a trademark can be a powerful asset and commercial/financial tool, and as such can play a vital role in any business development strategy.
If you would like any advice on trade mark protection, please get in touch to speak to one of our attorneys.