After nine-years (even Sir Alex Ferguson would have struggled to justify that), six time Ballon d’Or winner, Lionel Messi, has won a legal battle to register his name as a trade mark. Messi applied to register his name as a trade mark for use on his sportswear brand but cycle clothing and equipment brand, Massi, argued that similarity between the brands would cause confusion.
A trade mark owner can object to the registration of another trade mark where, because of a similarity in the marks and a similarity in commercial sectors, there is a likelihood that the purchasing public might be confused.
But fame and reputation do some pretty weird things to the space time continuum (and I‘m not talking now about Fergie Time although that certainly was a strange and powerful time warp phenomenon…..).
In the first instance, fame can help the owner of the earlier trade mark. The better known the trade mark is, the stronger the protection it enjoys and the easier it is to prevent the registration of a later mark.
Then again, where celebrities and sports people are concerned, being well known can actually make it more difficult for them to register their names as trade marks. The problem is that the public may see the name as a badge of allegiance, not as a badge of origin, so it functions as a promotional indicia rather than as a trade mark. Sometimes it helps a celebrity to register their name as a trade mark before they become famous. Crazy……
And then there is a third phenomenon. If the name of a celebrity or sports person is very well known, it can mean that people are not likely to be confused when they see it, even if it very similar to an earlier trade mark. That is what has happened here. By any criterion, Messi and Massi are very similar names, but the European Court of Justice (ECJ) has upheld an earlier ruling by the EU’s General Court in 2018 that the name Messi is too well known for confusion with Massi to arise.
It’s not uncommon for celebrities and sports people to seek to protect their names as trade marks, in fact they are rather fond of it. Think Kim Kardashian, David Beckham and Rihanna for starters. In fact, it reminds me of my first job in the trade mark profession when the agency I worked for in Manchester registered names like “Dalglish” and “Sparkie” (Mark Hughes for those of a younger generation). As the saying goes, words have meaning and names have power.
But celebrity applications can go from quite obvious and straight forward to head scratchingly strange. Taylor Swift tried to trade mark the names of her three cats and KISS star Gene Simmons attempted to register the metal horns gesture. More obviously sensible were trade mark applications a year or so ago by the Beckhams to register their children’s names as trade marks – before they became (too) famous, no doubt. It all comes down to getting good advice.
At Wynne-Jones IP, our highly experienced Trade Mark Attorneys can help you from concept to concrete. We can ensure that you will be able to develop your brand in confidence, use it freely and stop other people from leeching off your successes. We know what goes into brand development, and we know our way around the space time continuum. In fact, we navigate it all the time. And, like Messi, we are Wynners.
Come on, Ref. You gonna to carry on playing until Man U score?
Victor Caddy, Trade Mark Attorney & Director
Top Cat helps Dibble nab Copy Cats
It’s news that could make Amazon the most tip top Top Cat among toy and game designers, inventors and parents worldwide.
The retailer has announced the establishment of a Counterfeit Crimes Unit that will be tasked with bringing copycats to justice. The Counterfeit Crimes Unit is composed of former federal prosecutors, data analysts and investigators and will be charged with bringing sellers that break not only law, but Amazon’s policies, to justice.
UK Supreme Court judgment: Regeneron v Kymab
On 24 June 2020, the UK Supreme Court handed down its landmark judgment in Regeneron Pharmaceuticals Inc v Kymab Ltd  UKSC 27 in a dispute that has been rumbling on for seven years. It was good news for Kymab and bad news for Regeneron, which saw two of its patents invalidated. For the rest of us, it’s an important case which includes key rulings on insufficiency.
Coronavirus - UK IPO, EPO and EU IPO extensions and support
A simple overview of the current status from IPOs. Last updated 18th May 2020.
Is it unethical to patent?
The Covid-19 pandemic has prompted many companies to invest time and effort in developing technology that is aimed at helping care for, test, or treat people suffering from the disease. In normal times, these might be considered normal commercial activities and would be considered for patenting without a second thought. However, the fact that these developments are typically not being motivated by pure commercial gain, but by a desire to do something for the public good causes many companies to question whether or not they should seeks patents or any other form of intellectual property protection.