Most businesses are aware that logos and brand names are capable of protection as registered trade marks and even if not protected by registration can be protected in law if there is sufficient goodwill in the brand and it meets other specific criteria (the laws of passing off). However the protection of a registered trade mark and/or the laws of passing off can also extend to slogans and catch phrases as highlighted by a recently publicised incident.

The infamous "Am I Bovvered?" catchphrase is at the centre of a dispute between Catherine Tate and others and Christian Publishing and Outreach (CPO). The BBC reported that CPO has been using the phrase and Little Britain’s "Yeah, I know!" in a poster campaign aimed at young people without permission. Each poster features quotes from the Bible and the posters were according to the BBC being supplied to churches at £25 each by the organisation.

These phrases are synonymous with the characters created by Catherine Tate, Matt Lucas and David Walliams. Neither of the phrases is registered as a trade mark, yet, but they could be protected by the laws of passing off. It is more difficult to establish rights in passing off than it is to sue someone for infringing a registered trade mark.

To establish passing off Tate and Co need to show they have (i) a reputation in the phrases; (ii) that the adverts would confuse anyone seeing them into thinking Tate and Co are endorsing what CPO is doing; and (iii) that Tate and Co have suffered damage (quantified financially) to their reputation as a result. Whereas, if Tate and Co had registered the slogans as trade marks they need only demonstrate that the slogan used by CPO was the same as or similar to their own and used in a way that is covered by that registration to establish that it was being infringed.

CPO could have avoided this embarrassing problem if they had asked Tate and Co’s permission. It has been a costly mistake as it has had to recall all the posters. So this is a salutary lesson:

  • If you are going to use phrases coined by someone else in an ad campaign it’s best to get permission first.
  • To save the hassle (and inevitable increased cost) of enforcing unregistered rights protect your slogans as registered trade marks - that way when there is a problem it is quicker and easier to fix.

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