Trade Mark Infringement - Tennis Player Andy Murray - Coursework Example

Name: Institution: Course: Date: Tennis Player Andy Murray has recently joined the List of Celebrities who have registered their Names as Trademarks EU01202247. The Law has Therefore Now Been Extended from a Trademark Indicating the Origin of a Good to Now Protecting Image of a Celebrity Passing Off In fact, till lately, the United Kingdom never recognized whichever publicity right and, merely very restricted privacy rights1. For long, those rights had been held to intervene with liberty of speech’s protection. Even of date, the UK never recognizes the cause of action for any illegitimate commercial utilisation of an individual’s image or name unless the claimant can ascertain some privacy invasion, or is capable of revealing passing off, false libel or advertising. Thus, publicity right still turn not to be acknowledged as an autonomous economic right of property. It turns to be the reason why performers of music, the ABBA and Spice Girls both never succeeded in their efforts to command illegitimate activities of merchandising. Within the two cases, they were incapable of proving that users would suppose that the merchandise had been endorsed by the performers. Importantly, the courts of UK have acknowledged an actionable allegation for incursion of privacy right the moment a disclosure regards matters within which an individual possess a sound anticipation of privacy. Nonetheless, the courts failed to extend that right to an entire ruling out of an unpermitted commercial utilisation of one’s likeness or name. Within Campbell, the court imposed the privacy right discovering that; replica Naomi Campbell’s photograph assaulted her right to confidentiality. Likewise, images photographed at Michael Douglas and Catherine Zeta-Jones’s wedding, were discovered to be actionable through expanding the Breach of Confidence laws of UK to wrap privacy’s invasion2. In the two instances, public distribution of the images gave rise to liability, the reason being not because it comprised an illegitimate commercial utilisation of likeness of celebrity, but as it utilized photographs for which the celebrity owned a rational privacy expectation. Generally, a passing off action turns to be the cure against the harm to the reputation or goodwill of an individual brought about by perversion by another individual attempting to pass off his/her business or goods as another’s goods. In fact, a deed within passing off might lie for whichever unlawful utilization of a fame or goodwill of a celebrity by falsely signifying product’s endorsement by a particular celebrity. Likewise, the wrongful personality appropriation might equal to passing off since the celebrity might be said to possess a proprietary right within the elite marketing for benefit within his persona. An instance of a recent case law example of passing off action in UK is of Robyn Rihanna v Arcadia Group Brands Ltd (T/A Topshop3). In this case, Rihanna, a popular pop celebrity and style symbol, sued Arcadia Group Brands Ltd, a famous high street fashion seller, for retailing a t-shirt having her photo. The photo had been taken by an autonomous photographer at the time of shooting video for the single from Rihanna’s 2011 -Talk that album. Arcadia Group Ltd possessed a photographer’s license but never had a license from Rihanna4. As such, Rihanna argued that the t-shirt’s sale in absence of her consent breached her rights on the passing off grounds since the community would suppose Rihanna had licensed her image use to Arcadia Group Ltd. However, the argument for Arcada Group Ltd was that consumers would purchase the t-shirt as a result of liking the product together with their own virtues’ image. In fact, the t-shirt possessed nothing that embodied it as merchandise for Rihanna and the community would never suppose it turned to be. Arcada Group Ltd maintained that, the t-shirt turned to be of high quality style-led garment which turned to be very dissimilar from the standard merchandise of Rihanna. Therefore, the first finding for this case is that Rihanna possessed sufficient goodwill within a passing off action of that type. In fact, Rihanna was a global pop celebrity who operated a gigantic merchandising and approval operations. Additionally, Rihanna was considered as a fashion icon by several people, mainly young females and, thus such individuals had a lot of interest within what they deemed as Rihanna’s opinions about fashion and style. Thus, if Rihanna was seen wearing or approving a clothing item, it automatically became an approval of that thing within those people’s minds5. The other finding was that there was a real issue of misrepresentation. Eventually, Judge Birss J pointed out very clearly that the case never regarded on -supposed image rights- and stressed that in England today, a thing like free standing universal right by a celebrity (or anybody else) to manage their image reproduction never existed. Therefore, passing off tort comprised of the mere basis in law for Rihanna to contend to the selling of items of clothing having her photograph. That decision marked the first moment that a celebrity succeeded within this law within a passing off allegation relative to the utilisation of her or his image on clothing items6. However, it ought not be considered to mean that the trader’s mere sale of items of clothing possessing the celebrity’s image would, without more, amount to a passing off act. In arriving at his resolution, Birss J paid attention to highlight the particular circumstances’ importance of the scenario. As a matter of fact, within UK aside from civil autonomies, it turns to be criminal felony for an individual to perform whichever of the following in absence of enough consent, relative to recording which one knows or possesses reason to deem is an illegitimate recording: (i) hire or sell, (ii) import in the UK (apart from domestic or private use), and (iii) have such recordings having the objective of committing a contravening deal or act within such recordings during carrying out business7. Further, it turns to be a criminal felony to violate creating available right or playing that recording of a performer within a communal place, if such an individual possesses a reason to deem that he/she in violating the recording rights. Elements of Passing Off As a matter of fact, the three essential elements of passing off turn to be goodwill damage, reputation and misrepresentation. Those three elements turn to be referred as the classical trinity, like can be seen in the case of Irvine v Talksport Ltd8. In this case, Talksport being the defendants ran a radio station previously referred as Talk Radio. Their marketing firm released promotional material to various individuals mandated with placing advertisements. The material incorporated a brochure having on its face a petitioner’s image, a famous driver of racing. The consent to utilise that image had been obtained lawfully, but the image had been doctored by the marketing company, deleting the petitioner’s mobile phone and substituting it with the radio having the terms – Talk Radio9. The petitioner took a passing off cause for action on the grounds that, it comprehended by the market his endorsement of the walkie-talkie station. The Judge embracing that the court could take legal notice of the truth that it turned to be normal for celebrities to use their images and names through endorsement manner, ruled that the petitioner possessed a significant good will or reputation and the defendants had formed a fake message and, thus were accountable. In this case, the image evidently offered the fake message that the petitioner had approved the radio station of the defendant10. As a matter of fact, that was one of the initial cases in UK within which passing off succeeded within a fake approval case. Previous claims had not succeeded due to absence of a common field of activity or absence of real confusion possibility. In fact, the Irvine v Talksport11 case held that there turned not be any prerequisite for the defendant and claimant to be involved within a common field of activity. If the defendant’s actions produced a fake message that would be comprehended by the souk to indicate that his merchandise have been recommended or endorsed by the Petitioner, in that case, the Petitioner could be successful within passing off. Misrepresentation In this scenario, the complainant should verify that during business transaction, the defendant made a misleading representation12. As such, it never matter whether the perversion turn to be true provided the general impact is to falsify. In addition, it does not require the defendant to make depiction with the intent that confusion would result. The actual issue turns to be on the consumer. As such, the question turns to be whether the consumer would believe that an association between the services and goods of the defendant and the claimant’s reputation is present. Thus, an action for passing off requires confusion together with claimant’s loss. Damage to the Complainant In fact, for the passing off claim to be successful, it is mandatory for the complainant to portray likely or actual business harm connected to the action of the defendant. The loss does not need being fiscal and the word business turn to be broadly interpreted to comprise of several things. There can be goodwill loss even ahead of the business of the complainant has started if advance marketing and publicity has instituted goodwill. Likewise, goodwill damage can as well be there after business of the complainant has ceased. Remedies for Passing Off As a matter of fact, within a passing off action, the complainant might claim; injunctive relief, damages or calculation of the profits of the defendant, an inquest to institute loss and an order for destruction or delivery up of the breaching articles. Defences against Passing off Claim In point of fact, defences against passing off claims comprise of; the slogan, and mark among others has turn out to be generic, complainant’s slogan, and mark among others are not unique, the defendant might be erroneously utilising her or his own name, and the complainant has offered consent among others. Other Jurisdictions United States Within United States, the publicity right is connected to the privacy model. This can be evidenced by Roberson v Rochester Folding Box13 case. In this case, Mrs Roberson turned to be the first to call upon that right before the New York court, alleging that the company of the defendant had utilised her resemblance as flour bags decoration and utilised them for mercantile advertising. That claim was rejected by the court. However, later, the New York parliament engineered a privacy statutory right that set up both civil liability and criminal for breaches. Canada In point of fact, common law of Canada identifies the right to persona on restricted grounds. That was first approved in the case of Krouse v Chrysler Canada Ltd14. The court ruled that: where an individual possessed marketable value within their resemblance and such a remembrance turn to have been utilised in a way that proposes an approval of a product, in that case basis for an action in personality appropriation turns to be there. That right was afterwards expanded on in the case of Athans v Canadian Adventure Camps15, in which the court assumed the right of personality included both name and image. Trade Mark The Trade Marks Act of 1994 that turns to be the contemporary UK legislation asserts that; a trade mark turn to be whichever symbol capable of being graphically embodied that is capable of differentiating services or goods of a particular undertaking from the services and goods of other activities. Specifically, a trademark might comprise of words (consisting of names). Thus, in this case, no doubt exists that anybody within UK is eligible for applying to registering a name being his/her trademark. On the other hand, a registered trademark turns to be property right acquired by trade mark registration under the Trade Mark Act. Additionally, the registered trade mark owner possesses the remedies and rights offered by Trade Mark Act. Moreover, zero proceedings are present to recover or prevent damages for the contravention of trade mark that is not registered as such; however nothing within this Act possesses an effect to the law concerning passing off. Owning Image of Celebrity In the United Kingdom like Australia, no publicity right exists. In simple terms, other people who feel like using celebrity’s personality can do so in absence of their permission. As such, celebrities never own their persona, within the belief that they never possess the commercial worth of their persona16. Courts, specifically in England seem unwilling to offer retailing monopolies. This can be exemplified by Jules Rimet Cup Ltd v Football Association Ltd case. In this case, the court held that; the copyright of FA within the mascot had never reached expiration date; World Cup Willie of JRCL was imitated from the original of FA but never reproduced a significant part and thus never infringed, the FA could have thwarted the trade mark use by JRCL within 2005, through an action of passing off and the applications of JRCL were made in bad faith. This case in trademarks institutes that the trade mark applicant might rely on the truth that he searched for lawful counsel as a protection to a bad faith claim, but for the purposes of doing so ought to reveal the guidance that was searched for and the entire counsel which was obtained. Infringement As a matter of fact, trade mark infringement turns to be an unpermitted reproduction or use of a trademark which produces the confusion likelihood within the consumer’s mind concerning the services or goods source. The moment a client turns to possibly deem that, the infringer’s services or goods trademark turn to be those of the entity or person who in fact is the owner of the trademark, damages might be granted for infringement of the trademark. Put in another way, the possibility of tests of confusion tries to find an answer to the question of if the reproduction or the user use of the junior of a trademark generates a confusion likelihood among the consumers as to the association or source of the user junior of goods, such that, violates the rights of user senior. Normally, the subsequent tests are the ones that are utilised in determining confusion’s likelihood together with how the courts have applied them: marks’ similarity, trade channels, mark’s strength, actual confusion, sophistication of consumer, Natural Expansion’s zone and wrongful intent. In point of fact, however, in cases where the marks turn to be similar and the services or products turn to be also similar, it would be establishing the confusion’s likelihood. Within the case of Apple Corps Ltd v Apple Computer Inc, In this case, the pertinent sections of the 1991 could, within their drafting, be believed to expect the convergence of two fields of music content and IT. The iTunes music store comprised of a data diffusion service in union with which Apple Computer utilised the logo of the apple. Though that service conveyed musical content, that use never infringed the 1991 agreement. The utilisation in correlation to advertising and trading agreements came nearest to the field of Apple Computer of use, but stayed within association with data diffusion and thus never infringed the agreement. On the other hand, within UK, the confusion’s likely turns to be an important requirement for the discovering of infringement under the Trade Mark’s Act s. 10(2). This comprise of a possibility of connection also that was first initiated in the trade mark law of UK by The 1994 Act10 Section 10(2) of the trade mark act which stipulates that; if similar or an identical sign turn to be utilised in union with similar or identical goods for which a mark turn to be registered hence infringement turn to be there if a possibility of populace confusion is there. Within cases being counted under that umbrella, judges make use a 3 part test. First, the judges bear in mind the identity mark’s likeness with the symbol, second, the judges examine the similarity concept between the respective services and goods; and lastly, determine if a probability of confusion was there as a result of that likeness. The Act’s section 10(1) offers that if a sign which is equal to trade mark that is registered turn to be utilised during trade in association to identical services and goods for which that mark turn to be registered, hence infringement is considered to be there. This turns to be the king of infringement which never demands evidence of a possibility of confusion upon the public’s part. For instance, in the case of Patel v Allos Therapeutics Inc claims of Patel under the Human Rights Act turned to be bound to be unsuccessful. His claims of prejudice within system of UDRP that could be supposed to be argument of Article 6 were unconfirmed. Patel’s right to expression’s liberty under Article 10 was never an ineligible right: it required being gauged against others’ rights, like, the proprietors’ trade mark to benefit from their personal rights and assets. Additionally, Patel, respective to malicious falsehood and defamation possessed zero proof of the essential malice. In point of fact, The Act’s Section 10(3) offers that in UK, a registered trade mark turn to be infringed if an identical or similar mark turn to be utilised in correlation to services or goods that are dissimilar to those for which registration has been done, where that trade mark possesses repute and sign utilisation with no legal permission takes fair benefit of or turn to be injurious to the trade mark’s distinctive character. Infringement Defences Trade mark infringement has diverse defences. The honest practice issue within commercial and industrial matters as summarized within s 10(6) Trade Marks Act turn to be an imperative feature the moment of bearing in mind the following defences: Nothing within the Trade marks section [ss 10(1)-3] would be interpreted as averting the registered trade mark use by any individual for the function of recognizing the services or goods as the services or goods of the licensee or proprietor, given that, whichever such utilisation if not according to honest practices of business within commercial and industrial matters would be regarded as breaching the registered trade mark when the utilisation with no legal permission takes unjust benefit of, or turn to be injurious to, the mark’s distinctive character. Within consideration of that issue, in the case of Miguel Torres SA v Cantine Mezzacorona SCARL, the court held that the trademark never harmed against Article 40 as it was unequal to the description. There was a lucid power that trademarks include a geographical allusion were acceptable given that they never received. In addition, while section 7 offers for an application for registering similar names, more likely scenes turn to be that third parties would in simple terms utilise their own name daily, with no consideration of whether they turn to be breaching a trade mark that is registered. To cater for that circumstance, and to make sure that the entire Robbie William’s within UK turn not to be in violation of the trade mark of the singer each moment of signing their name, segment 11(2) (a) points out that a registered trade mark turn not to be breached by the utilisation by an individual of his personal name. Additionally, section 10 offers additional relief to the individuals sharing names with famous people, in addition to section 7 and 11(2) (a) 20. This section describes registered mark’s infringement and declares that an individual violates a trade mark the moment he utilises during trading. In fact, individuals utilising their personal names every day turn to be unlikely utilising it in doing business, thus fleeing from this section’s reach. However, for the individuals who utilise their name during doing business, the protection of that section would never apply. Celebrity Marks In fact, the same as other providers of services or goods to the community, and apparently possessing exceptional legal counsel, UK celebrities have proved extra happiness to following the sections 1, 3, and 5 requirements of the trade mark act and do the registration of their names as being trademarks. An example of such registration was that of David Beckham. Beckham’s brand and name turn to be arguably the most expensive within circles of sporting. Provided his presence in Europe, Beckham chose a Community Trade Mark instead of a United Kingdom one and he also made a request of registering his name with the Office for Harmonisation in the Internal Market (OHIM) in the year 2000. His application comprise of eight use categories, that are all for the goods instead of services, and consist of toiletries and perfumes; computer accessories and DVDs; key rings; games; watches; clothing; and calendars and posters. It is evident from the applications that; celebrities utilise trade mark guard to covering both primary services and goods which they turn to be popular with and also auxiliary products made to offer merchandise and publicity material to aficionados. Bibliography Ahmad, T & Swain, SR, Celebrity Rights: Protection under IP Laws, Journal of Intellectual Property Rights, vol.16, 2010, pp 7-16. Belson, J, Certification Marks, CA, Berkeley, 2002. Brookman, AL, Trademark Law, Rutledge, London, 2014. Burkitt, D & Wilkof, NJ, Trade Mark Licensing, Routledge, London, 2005. Davies, G, Celebrity and Trade Marks: The Next Instalment, Script-ed, vol. 1, no. 2, 2004, pp 230-240. Davis, J, Intellectual Property Law Core Text, Sweet & Maxwell, London, 2012. Denoncourt, J, Q&A Intellectual Property Law, CA, Berkeley, 2013. Garcia, J, The Personality Right in United Kingdom Law, The Carrington Rand Journal Of Social Sciences, vol.1, no. 2, 2014, pp 30-42. Giger, C, Criminal Enforcement of Intellectual Property. Routledge, London, 2012. Lacy, JD, Reform of UK Company Law, Oxford Publications, London, 2013. Lim, K, Fross Zelnick Lehrman & Zissu, P.C. Information Letter. www.frosszelnick.com., 2015, (8 May 2015). Macqueen, HL, Waelde, C & Laurie, G, Contemporary Intellectual Property: Law and Policy, Routledge, New York, 2010. Michaels, A, A Practical Guide to Trade Mark Law, Oxford, Leicester, 2002. Ng, J, The Domain Name Registration System, Oxford Publications, London, 2006. Palmer, EW, The Famous, The Unknown and the Deceased, 2012, www.worldtrademarkreview.com (8 May 2015). Sakulin, W, Trademark Protection and Freedom of Expression. Routledge, New York 2011. Spindler, G & Borner, F, E-Commerce Law in Europe and the USA, Rutledge, London, 2013. Spinello, RA & Tavani, HT, Intellectual Property Rights in a Networked World, 2005. Walden I & Hornle, J, E-Commerce Law and Practice in Europe, Oxford, Leicester, 2001. Weathered, L, Trade Marking Celebrity Image: The Impact of Distinctiveness and Use as a Trade Mark, Bond Law Review, vol. 12, no. 2, 2000, pp 159-184. Read More