Rock band fails to secure trademark rights for posters

A hearing officer at the UK Trademarks Registry has refused an application to register LINKIN PARK (the name of a well-known rock band) as a trademark in respect of "printed matter, posters and poster books". He held that the mark lacked distinctiveness and designated the characteristics of the goods because the band featured on the posters.

Linkin Park LLC, the company that represents the band, applied to register LINKIN PARK for various goods, including "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.

Linkin Park cited Arsenal v Reed in which the Court of Appeal found trademark use where Arsenal Football Club's trademarks were worn as badges of allegiance, because the use was liable to jeopardize the trademark's essential function of guaranteeing origin. It argued that this sanctioned registration of a distinctive mark in relation to goods or services where the trademark owner could (i) be expected to profit from the use of the mark, and (ii) suffer economic detriment if the use by others were permitted.

The hearing officer rejected the argument and refused to allow registration for goods in Class 16.

He first examined the mark pursuant to Section 3(1)(c) of the Trademarks Act. He referred to the European Court of Justice's decision in DOUBLEMINT, which held that a sign must be refused registration if at least one of its possible meanings designates a characteristic of the goods or services concerned (see ECJ reverses DOUBLEMINT decision). He also cited the NEW BORN BABY Case in which Advocate General Jacobs had commented that words describing the characteristics of toys (eg, 'giraffe' for a toy giraffe) were perceived by consumers as defining the nature of the toy such that they could not be registered.

The mark LINKIN PARK was the name of a music band and when used as the subject matter of posters and other printed matter it would do no more than represent a characteristic of these goods. LINKIN PARK posters would be purchased because they represented the band that produces music to which the purchaser enjoys listening - the name was the subject matter of the goods.

There was likely to be wide demand for posters bearing LINKIN PARK. A third party could legitimately enter such a trade since he/she is entitled to take pictures of celebrities and exploit copyright in them. He/she would also need to be able to use the Linkin Park name to designate a characteristic of the product.

Even if he was wrong under Section 3(1)(c), the hearing officer stated that he thought the mark was not distinctive pursuant to Section 3(1)(b). He reasoned that the average consumer - bearing in mind that it is likely to be common practice for third parties to market and trade in posters and poster books carrying the name of a music band - would not consider the mark as denoting trade origin. It would be purely descriptive and would not be identified as a mark without first educating the public that it was a trademark.

No objection was taken to registration of LINKIN PARK in respect of other merchandise, including clothing and mugs. This arguably creates an arbitrary distinction. Based on the hearing officer's reasoning, it is not clear why LINKIN PARK would be taken to indicate origin when used on a t-shirt featuring a photograph of the band taken legitimately by a third party, but not on posters featuring such photographs.

Jacqueline Irvine, Bird & Bird, London