Judgment day looms for trademarks law

Only the courts will determine whether the Trade Marks Act offers adequate protection.

If the Yucatan Liquor Stand company has its way it will soon join an eclectic group of brand owners ranging from Coca-Cola to Sumitomo Tyres and AT&T.

The restaurant company has made one of the more bizarre applications to the Trade Marks Registry to have its interior registered. Under previous trademarks legislation it would have had no chance. Under the revised legislation introduced last November it has only a slim one.

Its application is made up of seven different elements: the look and feel of an American diner with exposed brickwork and timber; business cards pinned to the walls; tablecloths made of brown paper; rotating drinks machines dispensing cocktails; fishing nets hanging from the walls; lights in the shape of fish; and all accompanied by the sound of Country and Western music.

It is described as a “look and feel” application. To many it may sound more like their worst nightmare. The Registry concedes that it is the most bizarre application it has received to date.

“The look and feel makes the restaurants distinctive,” says Ian Bartlett, a partner at Beck Greener, Yucatan’s trademarks adviser. “If somebody copied it and a customer walked into a non-Yucatan restaurant they could be misled.”

Ten months after it was introduced, The Trade Marks Act is starting to bear its first fruit. It simplifies registration, allows wider commercial protection to companies through a broader definition of what you can trademark, and makes infringement a criminal offence.

More than 400 applications have now been made to register product shapes, four to register smell, eight sounds and ten colours.

The Coca-Cola bottle will be the first shape to be registered (MW last week) having manoeuvred through a process that includes the initial application, acceptance by the Registry and then a 15-week, plus two days, “period of opposition” while the application is advertised in the Registry’s magazine and can be challenged.

Ironically the first registration coincides with the Institute of Grocery Distribution putting the finishing touches to a code of practice on copycat products.

It was the creation of the British Producers Brand Owners Group (BPBOG) and its ensuing battle with major retailers last year that made the legislation controversial.

The brand owners claimed retailers were deliberately copying elements of design and piggybacking on their advertising and marketing spends.

The BPBOG tried to force the Government to beef up the draft legislation and outlaw copycat brands. The Government re-sisted but left the door ajar

by saying that the added protection given by the Act would be monitored.

As a consequence brand owning legal departments throughout the UK will study the progress of the shapes and sounds element of the Act as more products register and legal conflicts inevitably break out.

Rose scented tyres from Sumitomo will be the first smell, AT&T’s advertising jingle the first sound, the Cadbury’s purple the first colour.

The Derbyshire Building Society will join the fray with a man tapping his nose in a conspiratorial manner as the first registered gesture. All have been accepted by the Registry and now await advertising and the outcome of the opposition period.

Ironically the rose scented tyres have pipped Chanel No5 to be the first smell. The fragrance company’s application was rejected on the grounds that it was too imprecise, highlighting the difficulty of describing a smell graphically.

“It (the Act) extends brand ownership rights,” says David Rickard at trademark specialists Boult Wade Tennant. “It provides protection for distinctive commercial elements. It is working in terms of what it set out to achieve but it is too early to say how effective the legislation will be in giving full protection.”

Other trademark experts are more blunt. “Until it is tested in court the trademark owners and lawyers will not be convinced that it gives protection,” says Janet Fogg, managing director at Interbrand, a BPBOG member. “It does not deter unfair competition where specific features of shape, smell, sound or colour are not copied and it does not prevent lookalikes.

“Individual features can be protected but it depends on which aspect is copied. Infringers only have to make limited alterations to avoid being sued for infringement. It highlights a gap in the legal system.”

The Act is having an increasing impact on manufacturers’ production decisions. In the US Coca-Cola has created a redesigned Sprite bottle with 3D bubbles on its surface which it will test market in the UK and other areas. Sources suggest that one of the reasons for the redesign, apart from making it distinctive on the shelf, was to protect it via the Trade Marks Act.

The Yucatan Liquor Stand has clearly designed its interiors to win the same protection. It is just lucky that the Registry does not base its judgments on taste, and style.

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