Christmas With You is the Best

Photo by ::: mindgraph :::, some rights reserved

The nights are drawing in, I’m wrapped up by the fireside in Hotshot Mansions, and the tree lights sparkle from the hall.  I have two whole weeks off from paid legal employment, and my days now consist of a meander through my home town, some low key present wrapping accompanied by Christmas tunes, and a session in the local pub with some old school friends in the evening.

In amongst all of this I have noticed the expansion of a familial phenomenon.

Christmas is, as we’re often told by advertisers, a time for families to get together and enjoy each other’s company. What many of them don’t mention (but which my law school ethics teacher did) is that when lawyers spend time with their family it is only a matter of time before uncle Jimmy mentions “suing that bastard after that accident I had” or cousin Timmy mentions he’s being “evicted by my tight landlord”. Both of these lead to encouraging smiles and a “would you mind taking a look at this?”

In fact, I’ve only attended two family get togethers this year and already I’ve picked up three “new instructions” – that’s three more than I managed in an entire two years in private practice with its merry-go-round of business development shindigs.

These sorts of familial instructions come with their own baggage of issues (much like the family itself when they descend on Christmas Eve, I suppose). Here are a few I’ve observed so far, from the practical to the boring, ethical and technical.

1. I’m sorry, Auntie, but you don’t actually have a case

Yes Auntie Mo, it is terrible that Mavis from number 35 said that about you, and that terrible things have been implied about your fruitcake in the parish magazine, and I know the newspapers have been talking about how London is the libel capital of the world but that doesn’t mean you can sue her “for every penny she’s got”.

I think these situations are a little less harmless than their professional equivalent.  It’s much easier to convince a septuagenarian relative that their understanding of the law is, shall we say, limited, than it is to convince legal counsel at a FTSE 100 company that he doesn’t know what he’s talking about.

Auntie Mo is more likely to back down in these situations, but you should be prepared (after the fifth or sixth glass of sherry) for her to walk past you again and mutter “honestly, five years a law school and he can’t even sue a little old lady…” and then later “so, Hotshot, how come you’re not married yet” – although the latter is not really relevant to this post…

2. I know nothing about this

As I may have mentioned above, there is no suggestion that my family members are jurists on a level with Sir Edward Coke, David Hume or Justinian, but there is a significant suggestion that my legal expertise is somewhat limited.  I like to think that I have a ready grasp of the key principles of contract and commercial law, a deeper understanding of intellectual property law, and a rapidly fading memory of some of the finer points of everything else covered in a four year LLB.  One of my biggest problems in this area is the fact that I am technically qualified to practice only Scots law, and that while I trained with an English law firm and now work almost exclusively under English law, I haven’t got round to acquiring dual qualification (mainly due to a reluctance to devote much time to studying English property law and “equity” (eh?) in any great detail).

This is completely lost on my family.  I think in general they believe that the existence of a separate Scottish jurisdiction is an esotericism of lawyers, created to provide an easy excuse to get out of helping family members resolve their (often petty) legal problems.  I haven’t raised this with Alec Salmond yet, but I’m sure it could provide an entire suite of pro-independence posters and materials.

As a result of both of these limitations on my professional expertise, I am not best placed to advise on small claims procedure in the County Courts, or the intricacies of English landlord and tenant law (frankly I still can’t get over this bizarre freehold/leasehold thing that goes on down here).

3. Are you being honest with me?

Now this is an issue in private practice too.  The client always believes that they are right, and in their mind, only goes to a lawyer for a high-level validation of their strongly held belief.  However, the smaller and more personal the claim, the more the righteous indignation is magnified, so by the time uncle Dave has had his eighth pint of bitter, he is blaming all the ills of society on the “stupid bastard” that reversed into him in the Waitrose car park eight years ago.  This will include such claims as: “he admitted it was completely his fault”; “yes there were about a dozen witnesses”; “he’d clearly had a couple”; and “I think he might have abducted the woman in the passenger seat”.

At this point, Dave is convinced that with a sprinkle of legal wordsmithery, provided by his “favourite nephew”, he will rise unchallenged through the County Courts, claim enough compensation to retire on, and emerge as a champion of the Daily Mail’s next campaign to end the grubby reality of Broken Britain through the medium of small claims car parking disputes.

The fact that it was Dave who may have had a couple, that it was he who admitted liability, and that his long-suffering wife Sybil was in the car largely against her wishes, doesn’t even cross his mind.

4. Professional Ethics

Professional ethics wasn’t discussed much on my journey through law school.  The class was (hilariously) optional, as if to play up to all those jokes about lawyers not having any, and seemed generally designed to scare us off ever even sneezing without prior written approval from the firm’s senior partner, money-laundering compliance partner and law society liaison officer.  As a result, I have long been imbued with a fear of even certifying copies of my friend’s passports in case I end up being extradited to Singapore to have my hands cut off.  The idea then of going behind by employer’s back and ‘dabbling’ in a world of law that has so far evaded my grasp fills me with dread.  As a lawyer, I am pre-disposed to frame all my advice, and social conversational gambits with a plethora of disclaimers, and this does not go down well over mince pies and champagne.  My uncle’s response to my claim that he couldn’t possibly pay me for my help (not advice) as this would make it look like I was holding myself out as some sort of expert was “excellent, so you’ll represent me for free then?”.

Frankly, my Christmas holiday so far has left me in a state of constant anxiety, and each day ends with me rocking to sleep clutching my practising certificate to my chest and waiting from a knock at the door from the Law Society of Scotland.  And that’s before I’ve even provided the wording for a short letter before action.

5. This is supposed to be my holiday

Finally, I saved up my holiday entitlement for the year so that I could enjoy a romantic Christmas by the fireside.  I love this time of year and I consistently see my home town through rose-tinted and snow-blanched glasses even though the reality is more blood-spattered and vomit-blanched glass.  This was my time to forget about the trials and tribulations of work and the legal profession (aside from a quick cease and desist letter on behalf of The Santa Claus Group).  As a result, I become a little bit grouchy when faced with the prospect of boning up on the intricacies of English landlord and tenant law or the small claims procedure of the County Courts.

I don’t spend my time on the pre-Christmas social scene asking my uncle Frederick to pull out my teeth, or my cousin Hermione to take a look at my sick kittens, so why should I be at the beck and call of a world of convoluted legal issues that have arisen amongst my family members in the last few years?

Names have been changed, and claims grossly exaggerated to protect the innocent (i.e. me) and for once all photos (apart from the title picture are mine).


Mythbusters: That’s Just Not Fair (Use)

Photo by Sam Teigen, some rights reserved.

Following on from last month’s woo-fest and my recent twitter rant about solicitors who use the terms ‘copyright’ and ‘trade mark’ as if they were interchangeable, the following is an explanation of some common copyright myths.

Consider it a public service announcement brought to you by In-House Hotshot.

Myth 1: You need to register your work before copyright applies.

Copyright is a right that arises automatically upon the creation of a qualifying work. In the uk (and Berne convention countries) no act is required to crystallise your copyright.

Myth 2: If there’s no copyright notice on your work it’s not protected.

Just as there is no requirement for registration of your copyright, there is no requirement that you put any form of notice on your work.

It is however good practice to include (c) [year of creation] [author’s name] on your work as evidence of your claim to copyright in the material. This will be useful in the event of any claim of infringement and also to put any potential infringer on notice that you claim copyright in the work.

Myth 3: Posting yourself a copy of your work will prove you own the copyright in it.

The so-called poor man’s copyright has little or no value. While an unopened envelope (with a postmark) may be considered evidence that you have posted yourself a copy of the material before that date it does not provide any evidence that you created the work and certainly provides no greater evidence than the use of a copyright notice.

There is obviously significant scope for this method to be abused and in any case computer files and emails etc provide a much more useful time stamp.

Myth 4: Copyright subsists in the name of celebrities. OR My business name is protected by copyright.

Copyright will only subsist in a work that demonstrates significant skill or work in its creation. As such, there is no copyright in single words or short phrases (and if there were no one else would be allowed to use that phrase anywhere). Similarly there is no copyright in a person or business’s name although it maybe a valid trade mark.

Myth 5: If I found it online copyright does not apply.

This is a common misconception arising from a misconstruing of ‘public domain’. If a work is in the public domain then copyright does not apply to it. However public domain does not just mean that the work is available to the public. Work has to be deliberately placed in the public domain or allowed to pass into the public domain. As a result articles on the internet, Google image search results and mp3s online will most likely be protected by copyright.

Myth 6: Most infringement can be excused under the principle of fair use.

Fair use is a principle of American copyright law that allows limited use of copyright material without the permission of the owner. Such use may include commentary, criticism, news reporting or research.

The sharper-eyed of my readers will have noticed that I described fair use as a principle of American law. It does not apply in the UK.

UK copyright law does have a principle of ‘fair dealing’ which sounds confusingly similar to fair use but is much less generous and only applies for non-commercial research, criticism or review purposes.

Just because you think your use of copyrighted material is fair does not mean you are not infringing the rights of the creator.

Myth 7: If I make three changes to the work I am not infringing.

Copyright is infringed where a ‘substantive part’ of a copyright protected work is reproduced without the permission of the copyright owner. What constitutes a substantive part will depend entirely on the size of the original work and the circumstances of the reproduction. As a result it is not possible to rely on a one size fits all rule as to how many changes you should make to avoid infringement.

I hope that’s helped. There are plenty more copyright myths so I expect to expand on this in the future as well as looking at some trade mark and patent myths as well.

Thanks to Brett (@BrettTechLawyer), Katherine (@whatKatydidnext) and Barbara (@filemot) for suggestions of some myths to bust!

Jejune IP – A Postscript

Photo by Sébastien GARNIER, some rights reserved.

One of the (many) frustrating elements of the recent freeman-on-the-land woo-fest  is their ability to pick and choose interpretations of the law to suit their claims.  While this may be the basis of most careers in law, it is far less satisfying to see it done with no consistency and little or no understanding of the underlying principles upon which the claims are based.

One of the more irksome effects of this pick-and-mix approach is the large number of contradictions it produces.  While it is not for me to pick apart every element of the faux-legal arguments advanced (although I must admit I am tempted) I will comment on the copyright issues.

Getoutofdebtfree’s recommend the so-called “declaration of copyright trademark” (which I’ve already debunked here).  This direction holds that by making a simple declaration in a local newspaper you can establish copyright in, and a trade mark of, your name.  Now while this is bollocks on many levels, it also explicitly contradicts another key freeman theory that holds that:

“All registered names are Crown copyright.” – ‘commonly known as dom’, Cif, 15 November 2011.

CKA Dom’s claim is based on a fingers-in-ears interpretation of the Crown copyright notice on a birth certificate.

Copyright in the layout of a blank birth certificate form in the UK belongs to the Crown, as is the case with the layout of most government documents that are to be completed by their users.  This is to ensure that no other body can copy or issue blank versions of these forms – sensible enough.

Ignoring the fact that it is not competent to claim copyright in a person’s name, we can also be sure that  it is a clear bastardisation of copyright law (and common sense) to suggest that by placing a copyright notice on a blank form the Crown can somehow claim to own the rights in the completed form which will necessarily include “work” produced by a third party.

If that is not enough, it is made clear in a number of places that the copyright notice on government forms extends only to the layout of the form.  You don’t need to spend hours in your local law library to work this out, you don’t even need to open Copinger and Skone James on Copyright, as the National Archives’ guide to Copying Birth, Death, Marriage and Civil Partnership Certificates is the first result on Google for “copyright in birth certificate” and helpfully advises in the first paragraph that:

“Copyright in the layout of certificates is owned by the Crown. The Crown does not assert any rights of ownership in the contents of the forms.”

Et voilà: another simple debunking of a freeman copyright theory.

So how is it that the freemen not only propose both of these contradictory interpretations, but also manage to go one step further and claim that despite (claim one) the Crown owning the copyright in your name, you can (claim two) claim this as your own and use it as a threat to stop people seeking repayment of your debts?

Haven’t they missed out some form of assignment?  A “Dear Liz, Please sign the enclosed copyright assignment document so I can seek to exclude myself from the jurisdiction of your treasonous courts.” letter perhaps?  Maybe this is only available to the premium subscribers of

Unfortunately I imagine this is another woo-based question to which we will not receive an answer.  Mainly because Queen Elizard-beth II is too busy hiding her bright green tail in her regal frocks to open her archives of hundreds of assignment documents made out in favour of Joe of the family Bloggs.


Jejune IP Law

Photo by Odalaigh, some rights reserved

I wrote last month about examples of bad IP law – articles in the press that misrepresent and confuse the various distinctions of intellectual property law.  A couple of articles this week have moved my thoughts on, ever so slightly, to the prevelance of IP myths.

Legal Bizzle has posted today on two Comment is free pieces that appeared on The Guardian’s Occupy Cif pages today.  Bizzle’s ire was mainly (and rightly) directed at Jon Witterick’s piece on defaulting on your debts as a viable economic option.  The cigar chomping bear has already expertly (and with some panache) deconstructed a number of Witterick’s claims regarding debt collectors and fractional reserve banking so I will turn my cannon on one of the intellectual property issues raised instead.

One of Witterick’s recommended alternatives to actually paying off your debts is what he calls “Option 3: Copyright and Trademark Procedure” – he obviously hasn’t read my last post, else he’d know it’s “Trade Mark”, but that’s really the least of our worries.  It is based on a dubious assumption that if the debt collection agency cannot use your name without your permission, they cannot write to you and ask for the money back.  Or if they do, you can sue them for infringement and claim a massive amount of damages (£10m per use is suggested – quantum? What quantum?)

This procedure, it is claimed, “offers a greater level of protection” (than Witterick’s others) against those pesky debt collectors who have had the gall to ask you to pay back some money you’ve borrowed.  All that you need to do is “take control of your Uppercase/capitalised name or Strawman in Common Law and International Treaty” – whatever that means.

Apparently, this taking control just requires you to make a “Declaration of Copyright Trademark” whatever that may be.  Fortunately a quick Google search turns up a number of examples (alternatively you can sign up to Witterick’s website and get access to his own suggested wording for free (or £5 if you need it in a hurry)):

Declaration of Copyright Trademark.
I am known by the name: ©In-house: Hotshot, Creditor, Trustee, Secure Party, Author of the Copyright Name Trademark Claim autograph (IN-HOUSE HOTSHOT™) or any derivative thereof HEREBY ATTEST THAT, I am competent and capable of handling my private and commercial affairs in my full capacity as Agent for the name IN-HOUSE HOTSHOT™ and will enforce with prejudice any Copyright Name Trademark Claim infringements. ALL RIGHTS RESERVED

Now I’ve worked in trade mark and copyright law for a few years (well, long enough to know they’re not interchangeable terms anyway) and strangely this expertly drafted piece of prose has never come up in my studies or practice of IP law.

This may be because it is, in technical parlance, absolute bollocks.

While the freemen of wherever are correct to say that copyright and trade mark rights can arise without the need for registration, they cunningly gloss over the key requirements for each set of rights.

Photo by 917press, some rights reserved

Copyright protects “original literary, dramatic, musical or artistic works, sound recordings, films or broadcasts, and the typographical arrangement of published editions” (Copyright, Designs and Patents Act 1988, section 1) – see any mention of names there?  No, me neither.

More importantly, copyright will only apply to a work of “independent creative effort” where “sufficient skill and labour has been expanded in its creation” – and I’m sure mummy and daddy straw man put a lot of thought into choosing baby straw man’s name, but I doubt it can be considered a high level of skill and labour (bad birthing puns excepted).  And if they did, well, surely the copyright is theirs as original authors, no?

In case you were starting to have doubts, the UK IPO handily provides a note on its copyright pages that (perhaps Meltwater notwithstanding) “names and titles do not have sufficient substantiality to be original”.

So there is no way that you (or your parents) can own copyright in your name.  Unless your name is coincidentally the first twenty pages of Harry Potter and the Deathly Hallows (or any other literary work), and even then I think JK Rowling and Bloomsbury’s lawyers might want a quick word.

Photo by caitlinburke, some rights reserved

So what about trade marks?  We read plenty of news stories about how Lady Gaga (UK TM registration number 2509635), Sarah Palin (US TM registration number 4005353) and David Beckham (CTM registration number 1796721) have registered their names, and if a name can be registered as a trade mark, surely it can exist as an unregistered trade mark too and then you could base a claim for infringement on these rights?

Well no.  Unregistered trade marks can only be protected through the common law wrong of passing off.  To succeed in a passing off claim you need to show the mark is yours and then establish the ‘holy trinity’ of reputation, damage and confusion:

  • The mark is yours – well that’s easy, we have our beautifully erudite Declaration of Copyright Trademark which has been published in the local newspaper and pasted onto our Facebook page.
  • You have built up a reputation in the mark – simple, I’ve been using mine for twenty-seven years now and it’s what everyone from my girlfriend to HMRC know me as.  What renown!
  • Damage – well of course – you’re using this name as a way to try and get me to pay back the money I owe – that’s pure economic loss right there I’d say.

So success right?  Well no.  What about confusion?  In order to prove confusion you need to show that there has been a false representation to the public which has led them to believe that the goods and services of the defendant (i.e. the debt collection agency) are those of the claimant (our Mr Strawman©™ etc).

This therefore requires a connection between the trade of our straw man and the business of debt collection.  This seems unlikely, unless while resisting the repayment of his own debts he operates a business that has been pursuing others for repayment of their own.  That’s beyond even Morissettian levels of irony, but doesn’t scan nearly as well, or rhyme with “dontchathink”.

So you cannot rely on unregistered trade mark rights in your name (though they may exist) to stop the wretched debt collector from calling unless you yourself are a debt collector, who has himself  run up a debt, and you can establish that the debt collector pursuing you has confused you (as a consumer), or potentially the original lender (as a purchaser of debt collection services), into believing that they are actually you and not an independent, completely unrelated debt collection agency, despite (presumably) their use of their own trading name which is in no way similar to your own name, and their use of your name as a way of addressing letters to you.

And what are the chances of that?  Better or worse than rain on your wedding day if you are a weather forecaster, or a traffic jam when you, as chief town planner, are already late for a meeting about alleviating traffic congestion?

Anyway, I’ve mentioned before that Taylor Wessing have published a list of what they term “Dangerous Intellectual Property Myths” and I think that today has shown us that we can add another one to the list, possibly just after the damaging reliance on ‘poor man’s copyright’:

“Because copyright and trade mark rights can exist without registration, all I need to do is say my name is eligible for copyright protection and is also a trade mark and it is so”

Sadly in this case it isn’t true, as Shakespeare almost said, that nothing is either eligible or ineligible for extensive IPR protection, but thinking makes it so.

Red All-Over: A Simple Distinction in Black and White

Photo by JamesRoseUK, some rights reserved

David Allen Green, new media legal darling and sedulous blogger at Jack of Kent (as well as approximately one hundred and one other places these days) wrote last week of another example of “Bad Law” – press articles which misrepresent or misunderstand the law to the extent that they serve only to undermine the public’s image of what the law is, and the excellent legal news reporting of the rest of the industry.

This theory of Bad Law reached the forefront of my mind again this week when a prime example cropped up in the Indy’s little sister, Itheir report on the latest twist in the Christian Louboutin v Yves Saint Laurent trade mark infringement case.

In brief, the case relates to a claim by Louboutin that YSL’s use of a red-painted sole on its posh (but not as posh as the claimant’s) high-heeled shoes is an infringement of his US registered trade mark (number 3,361,597 in case you’re wondering) for the use of red lacquer on the soles of women’s shoes.

Photo by Mr. Donut, some rights reserved.

I got itself into a right muddle over some simple intellectual property terminology and fell into the common trap of thinking all IP cases relate to copyright.  After initially making the right call and referring to Louboutin’s claim that a colour can be trade marked (ok they used the American trademarked, but we can let them off seeing as everyone seems to do that these days), the paper went on to say that Louboutin had claimed that YSL’s use of red infringed his copyright.  In fact, the excellent fashion law blogs at Styleite and Law of Fashion make no reference to copyright in their considerations of the case – presumably because it is not the same as trade mark infringement and therefore quite irrelevant to this case.

Bad Law reporting in relation to intellectual property has a long pedigree, and you only have to go back to mid-September to find another prime example in the national press.  In this article, the Daily Mail went full-throttle (the default setting for Mail news reportage) against British copyright law for banning the estimable British Sugarcraft Guild from allowing any Olympic imagery in their 2012 cake-baking competition.  All well and good (so long as you can stomach the Daily Mail’s firebrand style of writing) apart from the fact that LOCOG’s grounds for objecting to the cake contest were rooted in trade mark law and the specially enacted (and largely ridiculous) London Olympic Games and Paralympic Games Act 2006.

Photo (& cakes) by Micala, some rights reserved.

So why has copyright become a catch-all term for all intellectual property rights?

Are modern journalists really unable to get their heads round the distinction between the classes of intellectual property rights?  If so, they’re not alone.  Most lawyers outside of technology/media teams struggle to tell the difference, so why should the newspaper reading public be expected to know any better?  Especially if they are being spoon-fed by Bad Law news reporting.

As someone who works in the mysterious world of IP law on a daily basis, and who has been called upon to give training to lawyers, marketers and IT-bods, I now take it upon myself to offer up the following simple explanation:

TRADE MARKS (two words in the UK, please)

These protect any sign capable of graphic representation which distinguishes one business’s goods or services from another’s.  These include names (such as “Christian Louboutin”), logos (such as Apple’s apple), catchy slogans (like Audi’s “vorsprung durch technik”), colours (like Cadbury’s purple), or sounds (like the MGM lion’s roar).

Christian Louboutin has a US trade mark registration for the use of red soles in relation to ladies’ shoes.

Photo by verbeeldingskr8, some rights reserved.

PATENTS (that’s pah-tunts not pay-tents in the UK, please)

These protect inventions (processes or ways of doing things) and must be new and involve an inventive step.  UK patents cover things like Dyson’s bagless vacuum cleaner, Dunlop’s pneumatic tyre, Atkinson’s classic mousetrap and Churchman’s manufacturing process for chocolate (although strictly speaking the last three of these at least have expired).

For the avoidance of doubt, you cannot patent red-soled shoes (unless you have an innovative way of getting red paint onto the soles of shoes) – the concept of shoes is generally well-known.

Photo by Chen Hao Hsuan, some rights reserved.


These aren’t as well-known as their brothers, and cover the visual appearance of a product, perhaps the contours of a Coca-Cola bottle.

Christian Louboutin has a design registration for a style of zip used on a shoe.

Photo by MCaveen, some rights reserved.

COPYRIGHT (never copywrite or copyrite anywhere in the world, please)

This protects the expression of an idea, be it a literary, dramatic, musical or artistic work.  It covers, well pretty much anything, and arises automatically upon creation.  It can be recognised by the use of the © symbol.

Christian Louboutin will have copyright in his shoe designs assuming they can be considered an artistic work (and Miss HotShot certainly believes this to be true), but if he doesn’t raise this in his court case, it is not accurate to describe it as a claim of copyright infringement.

Photo by Sam Teigen, some rights reserved.

Give a Good Account of Yourself

Photo from thinkpanama, some rights reserved.

Jeremy Phillips venerable scrivener-in-chief of the IPKat tweeted on Thursday about a meeting with his new bank manager:

Professor Phillips went on to explain that:


Now, my role often exposes me to the early stages of product naming at HotShot Bank Inc and should put me in a position to fully understand the reasoning behind bank policy on branding and product naming.

We have a branding policy which provides that all new product names should be descriptive, and a trade mark policy which provides that all new product names should be cleared and registered as trade marks where appropriate.

The keen-eyed among you may have noticed a dichotomy here.  Descriptive names cannot be registered as trade marks.  This is a well accepted principle of trade mark law, and prevents the Rubbery Tyre Company from registering “RUBBERY” as a trade mark in relation to its tyres.

For many years, as Professor Phillips points out, consumer banks in the UK have got round this issue by applying for trade mark which mask the descriptive nature of their account names with some distracting distinctive element – usually an existing house mark.  This enables them to obtain registration for names like “Fancy Bank Current Account” and “Fancy Bank Gold Card” despite the fact that “current account” and “gold card” are clearly generic in the industry, and potentially purely descriptive.

This practice has also relied on a whole world of unspoken co-existence between the banks as they all sit back and allow their competitors to register effectively identical marks, so long as they are preceded by a differentiating house mark.  As a result Fancy Bank will turn a blind eye to the “Posh Banking Corp Current Account” and “Posh Banking Corp Black Card” (let’s face it, Posh Banking Corp would be a little more exclusive, wouldn’t it?).

So what effect does this have on brand recognition?  Well I would wager that most banking customers couldn’t tell you the name of their main bank account.  Or at least not the name that their bank knows it by.  They will know which bank it is with (we hope), but they will most likely just refer to it as their “current account with My Bank”.  They may, if they hold a premium account with a bank refer to it by its full name, (perhaps the Fancy Bank La-di-da Account?) or just generically as one of those premium accounts with Fancy Bank.  Either way they will see it as their current account or premium account with Fancy Bank, not their Fancy Bank Current Account® or Fancy Bank La-di-da Account®.

Photo from Robert Stokes, some rights reserved.

So how do the banks differentiate their accounts?  They might spend millions on getting sports stars to endorse them and appear in posters, they might spend hundreds of thousands on TV and poster advertising, but really all this does is push the house mark.  I would wager that the majority of new customers who walk into a branch of Fancy Bank having seen their fancy new poster campaign will just ask to open “a new account”, or maybe “that new account with whatshisface in the ads”.  Not many of them will ask to open a “new Fancy Bank Exploso-Account”.  Of course many of them will ask to open “a new current account”, but importantly they are asking for this in a generic sense rather than the ® sense.  So to an extent the trade mark of “Fancy Bank Current Account” has already served its purpose as an indicator of the source or the services when the customer walks into the bank.

So to what extent does the registration of “Fancy Bank Current Account” serve any purpose?  Well it doesn’t.  Does it even act as a trade mark?  No it doesn’t.  Does that mean banks with stop registering these names?  No it doesn’t.  The risk adverse will still go ahead and assume they get some protection for their use of “Fancy Bank Current Account” despite the fact that it really offers no more protection that their hundreds of other registrations for Fancy Bank, but to use an old law school analogy, in a game of Ring of Fire, no one wants to be the first to break the circle.

Same Same but Different: When is Racing Green not Racing Green?

Photo from byronv2, some rights reserved.

Similarity of trade marks is a tricky issue.  After all, one man’s leaping cat is another man’s sleepeh kitteh and either way, there has been a wealth of guidance, legislation and case law regarding what is and is not similar to, well, just about anything else.

But how similar is too similar, and where do we draw the line on colours and shapes?

If a company has a distinctive mark which features a simple symmetrical geometric shape and another company begins using the same shape, in the same colour, I think we can agree we have a pretty clear-cut case of infringement.

If that second company then slices its mark in half, I think most observers would say their new mark (especially if it remains in the identical colour) is still infringing.

But what then if the infringer bows to pressure from the original company and agrees to change the colour of its new half-logo.  How much of a change is reasonable?

Most brand owners I am sure, would want to see a move from one colour to another; two different colours, not two different shades, not just two Pantone numbers apart.

I certainly had a change from green in mind.  To yellow perhaps, or orange?  There are a lot of colours that aren’t green after all.  But no, green it was.  A lighter green sure.  But marginally.  A different-on-screen-but-print-it-out-and-you-can’t-really-tell-the-difference shade of green.

Photo from prorallypix, some rights reserved.

Now colour is tricky.  I’m sure the IT/design purists will tell you that there is no such thing as identical colours when you’re comparing screenshots to posters, to letterheads to multi-million pound rebranding campaigns.

Beyond that, even in real life, we can say that both cars above are green; but are they the same green?  Are they an identical green?  Are they a similar green? Well yes they are, but are they an identical or a similar green for the purposes of s5(2) of the Trade Mark Act 1994?

So here’s the rub, when is a colour not identical?  Is racing green still racing green when it’s Pantone 553, or Pantone 555?

Among the many “Dangerous Intellectual Property Myths” that Taylor Wessing launched this time last year was the oft-quoted “it’s not infringement if it’s two Pantone shades away from a coloured trade mark or design”.  As TW said themselves:

“two shades is not much of a change. It is unlikely to turn a confusingly similar logo into one which does not cause a likelihood of confusion.”

So that clears that up.  But what about three shades?  Five shades?  Ten shades?  Is there a magical dividing line where “confusingly similar” becomes “not at all alike”?  Perhaps known only to a select few Court of Appeal judges and some in-the-know members of OHIM’s Opposition Division?

Of course there isn’t; it is well-received in the UK that marks must be compared on the basis of their visual, phonetic and conceptual similarity.  Consumers might view marks as a whole, but us dispassionate lawyers must focus on the distinctive and dominant components of the two marks.

So while phonetics might not count for much in this instance, we can still see that two marks which consist of an identical shape (cut in half in one representation) in the same shade of dark green will still be confusingly similar for the purposes of European trade mark law.

But will this convince an opponent to substantially change the colour of their mark?  Will it hell.