IP ENSight | 5 December 2018

Trade marks: not just for businesses

by Manisha Bugwandeen-Doorasamy

We often make the point that trade marks are not the sole preserve of those who might be regarded as being part of the commercial world. Yes, trade marks are obviously critically important to individuals, firms and companies that manufacture goods or provide services, and yes, they’re every bit as important to sports teams, sportsmen and women, singers, actors and other celebrities. However, they’re also very important to those organisations and bodies that may be seen as non-commercial: public utilities, charities, cities, regional (provincial/state) administrations and even nations, because, at the end of the day, many of us are competing for limited funds and resources and are keen to distinguish themselves and avoid confusion. 

Here are a two current stories:

Scouts

In the USA, scouts are tying themselves in knots: knots that are even beyond their capabilities. An organisation known as Girl Scouts of the United States of America is suing an organisation known as Boy Scouts of America, and damages are being claimed. Why? Because Boy Scouts of America is changing its name to Scouts BSA, a move that will apparently make it easier for the organisation to start attracting girls, a move that will presumably lead to it using the expression “girl scouts”. What makes the complaint a bit unusual, is that it effectively relates to the fact that a name (boy) has been dropped, rather than the fact that one has been added. 

Girl Scouts of the United States of America says that the change of name will infringe its trade mark rights. It claims that the change will lead people to believe that the two organisations have merged. It claims that there has already been confusion. It also claims that the change of name is all down to the fact that boys are less interested in scouting than they used to be, and that membership of Boy Scouts of America has dropped dramatically over recent years. The future of scouting, it seems, lies with girls!

Scout’s honour is apparently not what it was!

Poppies

In the UK, Remembrance Sunday is taken very seriously. For the benefit of those who haven’t experienced it, an important aspect of this event is the buying and wearing of poppies on the days and even weeks leading up to the actual event. The proceeds of the sales of these poppies go to the Royal British Legion, an organisation that supports military veterans.

As with just about everything else, counterfeiting is a real issue. Poppies that are not linked with the Royal British Legion are now sold in large numbers, including on a Chinese shopping site. Needless to say, the proceeds of these sales do not go to any good causes, in fact, they could go to organised crime. The problem isn’t even limited to poppies, it extends to related jewellery, pins and broaches. The counterfeiting issue has become so serious over recent years that in 2018, the UK Intellectual Property Office and the Police Intellectual Property Crime Unit felt the need to team up in an attempt to tackle it. We wish them well!

Non-commercial organisations generally

We have written before on the branding and trade mark issues of non-commercial entities. A few years back, we reported on Transport for London (“TFL”), the authority that’s responsible for the tubes and buses in London. We also reported on how TFL had started licensing its trade, like the famous London tube map, the iconic tube roundel logo, and the expression “Mind the Gap” and how TFL had done licensing deals with various manufacturing companies, including a toy maker and a fabrics company. We also reported on how TFL had even taken this business model abroad, entering into licensing arrangements in Japan, China, North America and Europe, with product areas covering fashion, accessories and homeware.

South African utilities could learn from this.

Normal service is resumed

We don’t want to leave anyone thinking that branding by non-commercial organisations is now the major focal point of trade mark law. As just a few recent stories show, companies and celebrities are still very much at the forefront of trade mark law developments. Some examples follow:

We’ve seen Pepsi and a company called Intersnack slugging it out in the European General Court, with the court concluding that Intersnack should not be able to monopolise the term “Exxtra Deep” for foodstuffs, and that its trade mark registration should therefore be cancelled. We’ve seen financial giants Morgan Stanley approach a court in Delaware about a company that calls itself Morgan Stanley Capital LLC (what were they thinking?). The headline of one news report sums this case up rather nicely: There’s only one certainty in this lawsuit, Morgan Stanley is going to win. We’ve seen the estate of the late singer Prince take steps to register the colour purple, a colour that is of course closely associated with the artist. 

Cases like these remain the bread-and-butter of trade mark law. But the trade marks of non-commercial organisations are very important too!


 

Manisha Bugwandeen-Doorasamy

IP | director
mbugwandeen-doorasamy@ENSafrica.com
cell: +27 82 310 1016

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