Trademark law
11.14.2 Trademark law
A trademark is the sign by which an undertaking distinguishes itself from other undertakings b . By implication, it is also the sign which indicates to the
b To be registered under the 1994 Trademarks Act, a trademark must be ‘any sign capable of being represented graphically which is capable of distinguishing goods or services of one
undertaking from those of other undertakings’. Examples given include words (including personal names), designs, letters, numerals, or the shapes of goods and their packaging (the famous Coca Cola bottle is now capable of registration; under the old Act, it was not). Geographical names are now capable of registration. Recent applications have included the exclusive right to use certain colours – e.g. BP green. Trademarks can only be registered for particular categories of goods. Multiple registration is possible, but it costs extra for every category in which a trademark is registered, and failure to use the trademark for a particular category of goods will lead to the registration becoming invalid. It is therefore advisable to register trademarks only in those categories in which they will be used.
Managing in the Media
consumer that a particular undertaking has some commercial involvement with any product on which that sign appears as a trademark. If one undertaking, X Ltd, applies the trademark of Y Ltd to its products without permission, it is making the false representation that the product so marked has some trade origin with Y Ltd. Consumers looking to buy a product made by Y may buy the false product, with the result that Y loses revenue in the form of a lost sale. Moreover, if that product is in any way substandard or deviates in some essential way from the qualities to be expected from the original brand, the consumer will think badly of Y and its products may become less desirable. Both the consumer and the trademark owner will therefore have lost out. It is the function of the law that protects trademarks to protect the interests of both the owner of the trademark and the consumer. Any business, whether it is a company, a pop group, the maker of
a film or even an author, must therefore be able to protect its business reputation through the right of exclusive use of its own trademark. If other businesses were free to use that trademark, its function as an indication of origin would be lost, and with it would go all its ability to indicate quality and positive reputation to the consumer.
There is infringement of a trademark if there is use of the same or a similar mark on goods of the same category as those for which the mark is registered. If the mark is used on goods of a different category, there is infringement if there is a likelihood of confusion with the registered mark (and hence as to the manufacturer). An important qualification to the scope of the protection of trademarks is that there is only an infringement if the use of the trademark is in the context of trading in goods or services. For example, a book published with the trademark name ‘Wet Wet Wet’ in its title did not infringe the trademark, because it referred to the contents of the book and did not indicate any involvement of the group with the product. By the same token, the title of a film or a TV programme should be able to include a trademark name as long as it is a genuine use for the purposes of describing the subject matter.
In addition to the system of registered trademarks, there are two other branches of trademark law. The tort of passing off is generally said to protect unregistered trademarks. However, it is fairly flexible in form; it merely makes it actionable for a trader to make a misrepresentation to the consumer that damages the business of another trader. In effect, this means that it is actionable for one trader to annex the commercial reputation of another for its own ends, and this may be done without appropriation of a trademark. For example, ASDA was found liable for passing off when they marketed their ‘Puffin’ chocolate biscuits in a similar packaging ‘get-up’ to that
Principles of media law
of ‘Penguin’ chocolate biscuits. The essence of the wrong was that ASDA’s actions were felt likely to lead the consumer to believe that there was some sort of commercial link between ‘Puffins’ and ‘Penguins’.
The third branch of trademark law has already been mentioned in the context of privacy law – the tort of malicious falsehood. In its original guise as the tort of trade libel, it existed to stop the intentional or reckless making of false statements which damaged the business interests of individuals and undertakings. For example, it would be actionable under malicious falsehood falsely to tell various concert venues that a musician was too ill to perform (thus causing them to cancel concerts) or falsely to tell various production companies that a particular producer was already committed to another project and therefore should not be considered for work.
Because they embody an undertaking’s business reputation and are used by consumers to ensure that they buy the undertaking’s products, trademarks are among the most valuable and jealously guarded property belonging to any undertaking. The basic message here for media managers is therefore not to mark your products with trademarks that belong to other undertakings. However, trademark law is also of relevance because of the issues of the derogatory treatment of trademarks, product placement, and character merchandising.