Are trademark registrations the new way for angry consumers to make a point? 11 Sep 14
Brands are well-used to disgruntled customers taking to social media to air their grievances, but consumers wielding trademark law is a less common tactic. However, one UK individual has bucked that trend and has registered a trademark in the name of the bank that is the source of his ire, with the corresponding domain name being used to air his grievances.
While acknowledging that he has no legal claim against the income protection and life insurance products that were sold to him, and confirming that he signed the correct paperwork, consumer Christopher George decided to exercise his “right of protest” against HSBC bank over the subsequent protection repayment levels. He set up a website at www.thehongkongandshanghaibankingcorporation.com (the Hongkong and Shanghai Banking Corporation Limited being a founding member of the HSBC group), positioning his version of the Hong Kong and Shanghai Banking Corporation as ‘your local sperm bank, worldwide’ and using the site to air his grievances.
In a recent media release, he comments: “Many people in my position would have no idea how to stand up for themselves against a financial behemoth such as this – but in registering this domain name, I have proven that there are ways in which these banks can be got at, in the most public manner. This attitude can be taken in a number of other cases where the lowly consumer is up against a giant corporation with limitless funds and legal experts. All of these huge brands have weak spots, and just because their names are on every high street in the country, doesn’t mean that they are utterly infallible.”
World Trademark Review reached out to HSBC, which declined to comment, and George himself says that he has had no subsequent feedback or comment from the bank. However, for us the interesting angle is not found in the detail of George’s particular gripes or his taking to the Internet to air them, but the fact that he has gone beyond the registration of the domain name to also obtain a UK trademark for HONG KONG AND SHANGHAI BANKING CORPORATION in Class 5 (which includes chemical preparations for medical purposes, chemical contraceptive sponges, sanitary belts, sanitary tampons, sanitising wipes, semen for artificial insemination and sexual stimulant gels).
Asked for his thoughts on George’s move, Chris McLeod, director of trademarks at Squire Patton Boggs (UK) LLP, suggests: “There can be little doubt that the application for registration should have been rejected on the grounds of bad faith and that the applicant had no intention to use the mark in relation to the goods. That being said, I would expect HSBC to be able to shut down the site and invalidate the registration under Section 10(3) and Section 5(3), ie taking unfair advantage of/causing detriment to its reputation. Arguably, applications such as this should never make it past examination, but some clearly slip through the cracks.”
For his part, George told World Trademark Review: "I applied for a trademark in good faith as I do intend to sell goods pertaining to it through the website. It is therefore not purely a website to air my grievance, but an opportunity to do so nevertheless.”
Yet McLeod suggests: “I think that if he did start marketing products, that would make the position worse for him, because he would be using the mark in the course of trade as opposed to solely on the website.”
It is not the first time that trademark law has been used to air a grievance. For McLeod the incident brings to mind the Lush v Amazon dispute. While the two were locked in battle over Amazon's purchase and use of ‘lush’ as a keyword (Lush does not permit Amazon to sell its products), Lush also registered the mark CHRISTOPHER NORTH – the name of Amazon’s UK boss – as a trademark in Class 3 and launched a range of toiletries in his name. The products then took swipes at North and Amazon - for instance the tagline for its Christopher North shower gel boasted the strapline: “Rich, thick and full of it”.
So are we entering an era where trademark registrations are increasingly used in this way, creating a new headache for brand owners? On reflection it seems unlikely. There are mechanisms available for brand owners to utilise where trademark registrations and use step over the line and, for individual consumers, the cost involved in trademark registration makes the strategy an expensive way to make a point – when asked whether he feels others would follow his approach, George himself acknowledges: “I don't believe others will, as I don't believe they will have the unique set of circumstances I have had, and hence no reason to do so. I also believe that the process and registration of a trademark is beyond most peoples capabilities within their normal day-to-day lives.”
Even so, the current example is worth noting, whether by trademark counsel tasked with protecting their marks and company names or office examiners tasked with running the rule over trademark applications.
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