Keenan and Riches’BUSINESS LAW

Chapter 15Business property

It would therefore be impossible, in the UK at least,
to copyright as a trade mark the name ‘Diana’, though
‘Diana Queen of Hearts’ should be acceptable as should
‘Diana Princess of Wales’.
However, if, say, a geographical location is added
then it may be that a business name can be registered
as a trade mark, e.g. Mr Ahmed trading as ‘Ahmed’s
Barbican Tandoori’. This is an important change and
since such geographical marks are registrable under
the 1994 Act registration, where possible, should give
better protection to a business name than the tort of
passing-off (see later in this chapter). All that needs to be
established once the mark has been registered is whether
the marks are confusingly similar and they are in respect
of goods or services covered by the registration. The
case for infringement is then established. Passing-off is
a much more difficult matter to prove. Deception is
the essence of an action for passing-off. In the absence of
any patent or trade mark infringement it is only unlaw-
ful for a trader to copy and market a rival’s product
if the rival can show that purchasers are being or will
be deceived into buying the copy instead of the real
thing (Hodgkinson & Corby vWards Mobility Services
(1994)).
Since the shape of goods is now covered, the decision
of the House of Lords in Coca-Cola Trade Marks(1986)
in which their Lordships held that the shape of a Coca-
Cola bottle could not be registered as a trade mark
under previous legislation, is now reversed. The change
has produced a major revival of interest in trade marks
as a cheap and effective way of protecting brands. In
fact, Coca-Cola became the first company to register a
three-dimensional shape as a trade mark in 1995.
In this regard, the Trade Marks Registry has granted
trade mark status to Heinz for the shade of turquoise
used on its tins of baked beans.

Registration: the mark must be distinctive
A mark that is not distinctive can be excluded from reg-
istration under the Trade Marks Act 1994 as the follow-
ing case shows.

Procedure for registration

Any person who claims to be the proprietor of a regis-

trable trade mark and who wishes to register it must

apply to the Registrar of Trade Marks giving a statement

of the goods or services and a representation of the

mark. The Registrar may accept the mark absolutely or

approve registration subject to conditions or refuse to

register the mark. The applicant is entitled to be heard

before refusal. Where registration is acceptable, the

Registrar must advertise the application in the Trade

Marks Journal. Persons aggrieved by the application may

then object to the Registrar giving grounds for their

objection. The period for objection is three months from

the advertisement with no provision for extension. If

no application is made within that period or is made

but fails, the mark will be registered and will be valid

for 10 years from the date of application renewable

every 10 years. Even after registration, application can

be made to the Registrar or the court to rectify any error

or omission in the Register, but not in respect of matters

affecting the validity of the registration.

Collective and certification marks

The Act allows the registration of collective marks, e.g.

the Wool Mark on clothing, and certification marks

such as the mark of the British Standards Institute (the

Kitemark).

Enforcement

The effect of a registered trade mark is to give rights

of exclusive use to the owner. The general remedy is an

439

Société des Produits Nestlév Mars

UK Ltd (2003)

Nestlé attempted to register part of a familiar catch-

phrase ‘Have a Break’ in regard to its chocolate, choco-

late products, confectionery, candy and biscuits. Its rival

company, Mars, objected. The High Court ruled that reg-

istration for the first three words would not be granted

because the shortened phrase was not distinctive. It was

a slogan used in a number of contexts.

Comment. Mars’ objection can be appreciated. Many

companies might wish to tell us to take a break with their

products and to give one company exclusive trade mark

rights would be an unwarranted protection. In a separate

case BeckhamvPeterborough United Football Club

(2003) Victoria Beckham failed to get an injunction to

restrain the football club from using the word ‘Posh’, a

term the club had been using for some 50 years, even

though Ms Beckham had registered ‘Posh’ as a trade

mark. The case points up the fact that having a trade mark

will not necessarily allow the owner totally to exclude

its use in the absence of some evidence of public con-

fusion. ‘Posh’ would not seem to have the distinctive-

ness required for registration but it had been accepted,

though there were no objections, when Ms Beckham

registered it during her time with the Spice Girls band.