Most Read Contributor in South Africa, September 2016
Ditch the law journals - if you want to learn about trade mark
law, all you need to do is follow celebrity gossip. Within the
space of just a few weeks we've had three very instructive
First, Taylor Swift gets a right bollicking from her peers for
having the temerity to register certain of her lyrics as trade
marks for a range of merchandise. Lyrics like 'This Sick
Beat' and 'Cause We Never Go out Of
Style'. A certain Ben Norton - who one can't help
noticing seems to be far less well known than Taylor Swift - is so
aggrieved by Swift's grubby commercialism that he describes
trade marks as 'a direct attack on one of the most
fundamental and inalienable rights of all – our freedom of
expression'. He classes Swift as
'bourgeoisie', one of those horrible grasping
little people who, if you give them an inch, 'will take a
mile, and everything else you have in the process.'
Dreadful people who have 'already privatized land, water
Then we see Scarlett Johansson getting slapped with a
cease-and-desist letter the moment she launches a band called The
Singles. The trade mark infringement claim comes from a band called
just that, The Singles. Again expressions of outrage, with the
leader of the band saying that a simple Google search would have
revealed the existence of his band. And this: 'It's
hard to believe that any musician would do something like that to
another band. The Singles has been my life for the past 16 years.
We have worked so incredibly hard to make it a
Finally we get to hear the name Hall & Oates once again. Not
because they've produced a great piece of music. But rather
because they're irked by the fact that an 'artisanal
breakfast food firm' has launched a breakfast bar called
Haulin' Oats. Something the duo feels constitutes trade mark
infringement, being a 'phonetic play on Daryl Hall and John
Oates' well-known brand name.'
So what trade mark lessons can we learn from this celebrity
Well, from the Taylor Swift story we learn that celebrity
endorsement is a big thing these days, and for Ben Norton to
suggest that it's something that's unworthy of
'creatives' is a little bit naďve. Although
Taylor Swift is unlikely to go into the business of manufacturing
clothes and trinkets herself, she is very likely to want to do
commercial deals with companies that do make these things.
Companies that can see the merit in having their products linked
with a well-known singer.
The endorsement does, of course, not need to be limited to the
celebrity's name or image, something that was the focus of the
famous Rihanna passing-off case, where Topshop used Rihanna's
image on a t-shirt without her consent. There's no reason why
the endorsement shouldn't relate to something else such as a
nickname, a song title, or even lyrics from a song. One thing that
you can say about lyrics is that they're likely to be far more
distinctive and registrable than many of the brand names that
companies come up with.
As for Scarlett Johansson, well failing to do a search was
indeed a rookie error. The leader of The Singles is quite right
– a Google search may well have been all that was needed.
It's only if the Google search is clear that you need to do
more comprehensive trade mark registry searches to see if the trade
mark is available.
Perhaps it never struck the movie star that band names can be
registered as trade marks. Band names can, of course, be registered
in class 41 of the classification system, a class that covers all
forms of entertainment services. And, as anyone who knows anything
about trade marks knows, band names tend to be hotly contested,
particularly by those old rockers who either hoped to die before
they got old, or mistakenly believed that the vast fortunes that
they made all those years ago would see them through until the very
end – many of these oldies are, of course, discovering that
old hits have to be rehashed and bands re-formed. And some of them
are now cursing the fact that no-one thought to take naming issues
seriously all those years ago!
Finally from Halls & Oates we learn that the issue of trade
mark similarity is multi-faceted. A trade mark that's visually
and conceptually different from another trade mark may still be
confusingly similar in law if it's phonetically the same. We
also learn that trade mark rights can extend way beyond the core
business. Hall & Oates may possibly have registered their name
in product areas that are far removed from entertainment services,
such as foodstuffs (possibly in anticipation of a celebrity
endorsement deal). And even if they didn't, there's always
trade mark dilution, the protection that's given to well-known
trade marks that are used by others in totally unrelated product
areas. Perhaps it's dilution that will come to the band's
aid in this case.
Time to get back to my glossy mag!
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