Titanic Trademark row erupts over MPW's latest restaurant venue
By Jeremy Dickerson, Intellectual Property Partner, Hammond Suddards
The name Titanic may conjure up thoughts of a wind swept Kate Winslet waxing lyrical whilst balancing on the mast of a film set, but to trade mark lawyers the name brings to mind the current legal row involving the so called 'enfant terrible of British cuisine' celebrity chef Marco Pierre White, and Harland and Wolff, the builders of the original ill-fated ship Titanic which met its watery grave in 1912 on a tragic maiden voyage.
Titanic, the biggest film of 1998 ended the year being the subject of one of the biggest trade mark disputes. The owners of the trade mark "TITANIC" in the UK, and builders of the original ship - Harland and Wolff, are not only suing the celebrity chef Marco Pierre White for the use of the name Titanic at his fashionable new restaurant, in the former Regent Palace hotel near Piccadilly Circus (also the home of the restaurant and club The Atlantic bar and grill), but are themselves the subject of revocation proceedings against their trade mark by Twentieth Century Fox. The Writ against Marco Pierre White and the Originating Notice of Motion against Harland and Wolff were issued in the High Court within 10 days of each other in late November and early December 1998.
Harland and Wolff are suing Marco Pierre White for registered trade mark infringement for using the name Titanic at this restaurant (the trade mark of Harland and Wolff is registered in Class 42 (amongst others) for restaurant services) and for items in his restaurant which have the name Titanic on them which may include plates, napkins and the like. Interestingly, there is no claim for passing-off, which is common in trade mark infringement proceedings. This is possibly because it is more likely that the public will think the restaurant is associated with the film than the ship builders, and thus Harland and Wolff could not get such a claim off the ground.
At the same time, and it would appear coincidentally, Twentieth Century Fox, the makers of the blockbuster film Titanic, have applied to revoke the TITANIC trade mark on the grounds that (a) it is devoid of distinctive character (b) it is likely to deceive the public (c) the application was made in bad faith and (d) the mark is identical to an earlier mark.
It is likely that the revocation action will proceed faster through the Courts than the infringement action and so Marco Pierre White and his advisers are likely to be able to have someone else - Twentieth Century Fox - fund what could effectively be their own counterclaim for revocation of the trade mark which, if successful, will knock out the claim for infringement. It is unusual for a trademark to be given for a word on its own which is employed in common usage. Generally, if a common word is to be used as a trademark it must be expressed with some distinctive typography or used together with a distinctive logo.
The saga surrounding the Titanic looks set to continue along with the headlines which will keep commanding column inches long after stars, Leonardo Di Caprio and Kate Winslet, are consumed in the hype of their next big hit.
For further information please contact Jeremy Dickerson, e-mail: Click Contact Link , 7 Devonshire Square, Cutlers Gardens, London EC2M 4YH, UK, Tel: + 44 171 655 1000
This article was first published in The Lawyer on 15 February 1999
The information and opinions contained in this article are provided by Hammond Suddards. They should not be applied to any particular set of facts without appropriate legal or other professional advice.
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