Rock band fails in poster mark appeal
The appointed person of the UK Patent and Trademarks Office has upheld a decision to refuse registration of LINKIN PARK (the name of a well-known rock band) as a trademark for "printed matter, posters and poster books".
Linkin Park LLC, the company that represents the band, applied to register LINKIN PARK for various goods. The Trademarks Registry allowed registration for all the goods except "printed matter, posters and poster books" in Class 16 of the Nice Classification. Objection was taken under Sections 3(1)(b) and (c) of the Trademarks Act 1994, which respectively prevent the registration of trademarks that (i) are devoid of distinctive character, or (ii) consist exclusively of signs or indications of characteristics of the goods or services. (For a discussion of this decision, see Rock band fails to secure trademark rights for posters.)
On appeal before the appointed person, Linkin Park argued that:
- the mark was coined by the group and was therefore an invented word;
- the mark was not descriptive as the subject matter was not a "characteristic" of the goods in question;
- the registry had made an arbitrary distinction between goods for which the mark was accepted and those for which it was denied registration;
- the decision was inconsistent with certain other registrations, most notably a Community trademark registration.
The appointed person dismissed the appeal. His reasoning included the following points:
- Although the word LINKIN and the phrase LINKIN PARK were invented by the group and were meaningless at the point at which they were coined, it is the meaning of the mark at the application date that is decisive. At the application date, this mark was no longer meaningless. Instead, it denoted the group. Even though this did not make LINKIN PARK a dictionary term, it is clear from decisions of the European Court of Justice that signs need not be dictionary terms in order to be considered descriptive.
- It was not the case that, in order to be a characteristic of the goods, the thing denoted by the sign has to be a measurable property of the goods rather than information content of the goods. In fact, the information content is a critical characteristic of many goods (eg, computer programs). In order to fall within Section 3(1)(c), the sign does not need to be within one of the types described in that section. The fact that there was no better way of describing a poster of the group than as "a LINKIN PARK poster" meant that the application of Section 3(1)(c) could not be avoided. The group could not be denoted in any other way.
- The name of a performer, as with the name of an author, undoubtedly indicates the origin of the performance or work. However, it does not follow that the name of the performer or author acts as an indication of trade origin of a product. In particular, the exploitation of a photograph of a rock group will not necessarily require the group's licence since the owner of the copyright in the photograph would be the photographer. The group would have to adduce evidence that consumers would expect posters depicting the group to be licensed by the group.
- The corresponding Community trademark for LINKIN PARK, which had been accepted for registration, was not of persuasive value.
This decision seems to indicate that unregistered rights in passing off may be the only real recourse for enforcing rights in band names for certain merchandised goods in the United Kingdom. Owners of such marks are also advised to apply for trademark protection early and be vigilant on the marking of products to ensure, as far as possible, that the mark communicates trade origin
Darren Olivier, Field Fisher Waterhouse, London
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