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Tuesday, 27 February 2007

Trade mark decision very very frightening

The IPKat has come across a victory for the rock group Queen before the Trade Marks Registry. Julia Ruhnke made a Madrid Protocol application to register the term QUEEN FOR A DAY for clothing. The surviving members of the rock group Queen opposed the application based, inter alia, on their registration of the word QUEEN for the same goods.

Since the goods were identical, the issue came down to whether there was a likelihood of confusion taking the similarity between the marks into account.

Yes, there was, said Mr Hearing Officer Reynolds. Although the number of words in the two marks was different, there was a strong conceptual link between them. QUEEN, when used on clothing, would be viewed as referring to the concept of a female monarch, which would be fanciful in relation to clothing. QUEEN FOR A DAY contained a conceptual difference, as it suggested how the wearer would feel when donning the clothes but (hold on to your hats folks), this conceptual difference actually enhanced the degree of similarity between the two marks because it reinforced the connection with royalty by suggesting that the lucky lady wearer would feel like a female sovereign.

Perhaps surprisingly for Bohemian Rhapsody fans, the evidence did not establish that the QUEEN mark had acquired distinctiveness through use for clothing. Although it was undoubtedly the name of a famous band, this did not mean it had acquired any sort of secondary meaning in relation to clothing. Ironically, the IPKat points out, this probably helped the band, as it left the word QUEEN meaning only female monarch, which set up the audacious conceptual (dis)similarity trickshot described in the previous paragraph.

The IPKat notes that once again, the issue of trade mark use is rearing its ugly head. Queen is undoubtedly a well-known band, and bands undoubtedly often produce merchandise, such as t-shirts, but they are (according to the Registry) not viewed as the source of that merchandise by consumers. This kind of reasoning could, in theory, put such marks at risk of revocation for non-use, so Queen was quite lucky that its name has an alternate meaning. However, the IPKat isn’t happy that this alternate meaning seems to give the band a wide scope of protection over what’s close to a laudatory term.

1 comment:

Jeremy said...

Am I alone in finding myself highly surprised at the conclusion that there was a likelihood of confusion? If I were peddling QUEEN FOR A DAY wares, I would be even more surprised to be sued for trade mark infringement or passing-off by the proprietors of the QUEEN mark. Must be the naivety of old age ...

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