NELLIE THE ELEPHANT sent packing by Trademarks Registry

United Kingdom

The UK Trademarks Registry has refused to allow an application to invalidate the trademark NELLIE THE ELEPHANT, filed by the owner of the copyright in the song "Nellie the Elephant", on the grounds that copyright did not subsist in the song title alone. However, the registry upheld a separate claim for revocation of the mark on the grounds of non-use.

The mark NELLIE THE ELEPHANT was registered by Animated Music Limited in 1991. Dash Music Co Ltd applied for a declaration of invalidity in 2002. Dash had licensed the composition of the song "Nellie the Elephant" to Animated's predecessor in title - 101 Film Productions Ltd. Dash argued for a declaration of invalidity on the grounds that (i) its copyright in the song was an earlier right preventing registration under the Trademarks Act 1994, and (ii) Animated had made its trademark application in bad faith under the act as it had known of Dash's claim to the name as a result of its ownership of all rights in the composition. In response, Animated denied that Dash had any rights beyond copyright in the musical composition.

The success of this application depended entirely on whether Dash could establish that copyright existed in the song title because Dash had not filed a claim based on the existence of copyright in the lyrics. Dash, argued that although previous legal authorities had established that copyright does not normally exist in a name or title, these authorities did not go so far as establishing that there can never be copyright in a title. In support of this contention, Dash stated that "Nellie the Elephant" had the necessary spark of literary merit and, consequently, Animated's application for the mark was an unauthorized reproduction of copyright material.

The registry dismissed the claim. It held that the song title "Nellie the Elephant" was not a literary work and that, without the lyrics of the composition, the title alone did not give the requisite pleasure to users. Perhaps more importantly, the registry was wary of finding copyright in a name in this instance as the potential implications were likely to unduly expand the scope of copyright in song titles.

In the alternative, Dash had argued that because the title "Nellie the Elephant" also appears in the lyrics of the song, Animated had taken a substantial part of the copyright in the material by registering that phrase as a trademark. The registry held that although the test for assessing a "substantial part" is qualitative, and not quantative, the appearance of the title in the lyrics did not constitute a substantial part of the musical composition.

At the same hearing, Dash applied for revocation of the mark on the basis of non-use over five years. The registry issued a separate ruling upholding Dash's claim. It noted that "genuine use" must be consistent with the function of a trademark (ie, to guarantee the origin of goods or services). In the case at hand, the registry stated that because Nellie the Elephant is a fictional character (although fictional characters can be trademarks), the use of the name was solely to indicate the subject matter of the films produced by Animated. Therefore, use was not as an indication of trade source, but was indicative only of content.

The registry held that anyone wishing to use Animated's film production services would do so by reference to Animated's name and not by reference to NELLIE THE ELEPHANT.

Christina Pettit, DLA, London

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