More than ever before, celebrities are taking a stand against discount vendors, who cash in on their fame and fortune by selling up to 2bn worth of unofficial merchandise in the UK.
The Spice Girls, the most marketed band in UK history, and celebrity footballer Eric Cantona, (MW June 5) have recently made the headlines with applications to the Patent Office to have their names and associated catchphrases registered as official trademarks.
Yet the registering process takes an average of six months, with some taking even longer. Assistant director of marketing at the British Patent Office Geoff Sargant predicts the Spice Girls’ applications will be registered by October, giving unscrupulous practitioners a whole summer to cash in.
All trademarks are subject to public approval through the Trademarks Journal, a weekly publication which lists applications to allow public consultation and raise objections. Despite the earliest application by Virgin Music for the Spice Girls being made in October 1996 at Europe’s central trademark office in Spain, it has yet to achieve publication.
Lack of legal protection is already proving to be a problem for the band as they have recently failed to prevent sticker company Panini from publishing a “Fab Five” sticker album (MW June 12). The group sought an injunction on the grounds that the album carried the Spice Girls’ name and therefore suggested endorsement. The album did not, in fact, mention the band name once and the case was won after defence lawyers presented the judge with a whole variety of other companies’ merchandise which did not feature a stamp of unendorsement either.
Andrew Hearn, head of litigation at Titmuss Sainer Dechert, the law firm representing Panini in the case, says that judges are “increasingly reluctant to accept that the mere appearance of a name or face suggests endorsement”. He adds that many judges also accept that the public is more concerned with the product itself than whether or not it has been officially endorsed.
The Spice Girls and Cantona follow in the footsteps of stars such as Ryan Giggs, Damon Hill and Jurgen Klinsmann. While Giggs has covered all possible variants of his name – Giggs 11 (his shirt number) and nickname Giggsy – Hill has registered the image of his eyes peering through the visor of his crash helmet and Klinsmann has registered the catchphrase “Klinsmania”.
According to UK Patent Office spokesman Darren Harvey, stars are becoming increasingly astute when it comes to marketing. “The marketers behind the stars realise they have to cover every angle to ensure people cannot make money out of them [the celebrities]. They are now aware of how much counterfeiting is costing them,” he says.
The Spice Girls are a perfect example. Applications by individual group members Victoria Aadams, Emma Bunton, Melanie Chisholm, Melanie Brown and Geri Halliwell, as well as Virgin Music, are for “Spice”, “Spice Girls”, “The Spice Girls” and “Spice Girls – The Fragrance”.
Of the 42 classes under which trademarks can be registered, the band have got a great many covered. The list of applications covers cars, mopeds and motorbikes, weather vanes, beers, fruit juices and waters, clothing, pastries and desserts, footwear, toiletries, CD-Roms, jewellery, stationery, gift vouchers, leather goods, ornaments, luggage and video games, among countless others.
Cantona’s application is for three variations of his name – Cantona, Cantona 7 and the chant “ooh aah Cantona” – and covers only printed matter and apparel.
The introduction of the Trade Marks Act in 1994 represented a milestone in the industry. The law had not been updated since 1938. Nowadays anything from a distinct shape to a smell or colour can be registered, which was unheard of pre-1994.
Keith Hale, senior executive officer at the Local Authorities Co-ordinating Body on Food & Trading Standards (Lacogs), applauds the stars for taking advantage of the greater scope the new law provides.
He says: “We are convinced that there is a problem that has not been dealt with. Everyone must pull together to tackle it and people are now getting the full protection of criminal law, as opposed to the more contentious area of civil law.”
Having a celebrity name, associated image or catchphrase registered gives greater legal protection but cannot prevent counterfeiting which, even without trademark law, is illegal. According to Lacogs chief executive Jim Humble, a product is not counterfeit unless it is marketed as “having the support of the people it portrays” – such as a claimed official endorsement. “Our concern is whether the public is being deceived,” he adds.
According to Harvey, more unscrupulous practitioners are “finding avenues to exploit” – the areas trademark law cannot cover – particularly in the case of football clubs. For example, although Manchester United is a trademark, the word Manchester is impossible to register. Knowing this, street vendors are producing scarves with Manchester on them. “These people get close to infringing the law without actually infringing it,” he says.
There are about 400,000 registered trademarks in the UK; but of all the businesses trading in this country, 95 per cent take no action to secure trademark protection. Perhaps the celebrity is about to become a different kind of icon to emulate – a business model.