Trade Marks: UK Trade Mark Office finds Alex Ferguson to be devoid of distinctive character

A recent decision of the UK Trade Marks Office provides guidance on whether or not the names or images of famous people or groups can be registered as trade marks in respect of image carrying goods (i.e. posters, photographs, transfers, figurines). The decision is likely to influence the New Zealand Trade Marks Office's thinking on this issue.

In this case Sir Alex Ferguson, the well-known football manager, had applied to register the trade mark ALEX FERGUSON in class 16.

The goods in class 16 for which he sought registration were: printed matter, posters, photographs, transfers, stickers, decalcomanias, and stickers relating to football.

The UK Trade Mark Office objected to the proposed registration of the mark ALEX FERGUSON because in its view the mark consisted exclusively of a sign, the whole of which was devoid of any distinctive character and which was a term that could serve in trade to designate the subject matter of the goods in respect of which it was to be used.

Put another way, the UK Trade Marks Office considers that the names of famous people (or groups) are unlikely to be accepted by consumers as trade marks when they are used on such goods as posters, photographs or transfers (i.e. image or name carrying goods) because they will usually be seen as mere descriptions of the subject matter of the product.

Applying this reasoning to Sir Alex's application the UK Trade Mark Office considered that the public when they see an image of Alex Ferguson on a poster would be likely to describe the poster as an "Alex Ferguson poster" rather than draw the conclusion that the use of Alex Ferguson's image on the poster was trade mark use (i.e. indicative of the origin of the poster).

The office refused to grant the application.

On refusal of the application, the UK Trade Mark Office was asked under section 76 of the UK Trade Marks Act to state in writing the grounds of its decision to refuse the application.

The grounds it gave were interesting and likely to be applied to any similar applications made by famous people or groups under New Zealand's trade mark legislation.

In essence, relying largely on its previous decision in the Doublemint case (Wm Wrigley Jr & Company v OHIM Case 191.01P), the UK Trade Mark Office held that signs and indications which may serve in trade to designate the characteristics of goods or services are deemed by the relevant trade mark legislation to be incapable of fulfilling the indication of origin function of a trade mark. It followed that as the mark ALEX FERGUSON could serve in trade to designate one of the essential characteristics of the goods (e.g. "Alex Ferguson posters") it could not be accepted for registration.

The decision is available in full at www.patent.gov.uk.

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For more information on copyrights or any other intellectual properties issues, please email or call Garry Williams on 64 9 916 8661.