ICE trade mark dispute: a chilling reminder to monitor trade mark registers and act against problem trade mark applications!
We take a look at the background and the judgment in the recent ICE trade mark dispute.
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The Court of Appeal has upheld a complaint by Rihanna against the high street fashion retailer Topshop.
In 2012, High Street leaders Topshop sold in store and via its website a fashion t-shirt displaying an image of celebrity superstar, Rihanna. The image was derived from a photograph of Rihanna which was taken when she was on a video shoot for a single from her “Talk That Talk” album. Similar images had been used by Rihanna in connection with the album. This particular photograph was taken by an independent third party photographer who as owner of the copyright in the photograph licensed the use of the image to Topshop.
Rihanna issued proceedings for passing off on the grounds that the use of the image by Topshop was not licensed and that a substantial number of people would think that she had endorsed it, when in fact it was not connected with her at all.
Topshop argued that Rihanna was claiming an image right, and that no such right existed in English law.
The Judge accepted that the mere sale by a trader of a t-shirt bearing an image of a famous person does not, in and of itself, amount to passing off. But he found that the sale of this t-shirt by Topshop in the circumstances of this case did amount to passing off because it was likely to lead people to buy the t-shirt in the belief that Rihanna had approved or authorised it.
Topshop appealed the decision and the Court of Appeal dismissed the appeal thereby upholding the original passing off decision in favour of Rihanna. The Appeal Judge Lord Justice Underhill stated “I regard this case as close to the borderline”. Lord Justice Underhill went on to explain that the success in this case for Rihanna was based on the combination of two things, – her past public association with Topshop, and the particular features of the image itself, which is apparently posed and shows her with the very distinctive hairstyle adopted in the publicity for the Talk That Talk album.
This case confirms that image rights per se do not exist in English law and so merely putting an image of a famous person on a t-shirt without their permission does not of itself amount to passing off or an infringement of their rights. However, this case highlights that there are exceptions and so that if there are circumstances which imply that the celebrity has endorsed the item then this could give rise to a claim of passing off.