Publications > Names of Famous People - Sir Alex Ferguson

O-094-06 (preliminary hearing before the Appointed Person, Geoffrey Hobbs QC), 22 March 2006

This is part of an ongoing attempt to register a famous name -Alex Ferguson, the legendary manager of Manchester United F.C. - for ‘image carrier’ goods in class 16: posters, photographs, transfers, stickers, decalcomanias, and other ‘image carrier’ printed matter. Following in the tradition of LINKIN PARK, the applicant is engaged in a fight with the Registry over its apparent unequal treatment towards famous people for the mere fact of being famous - often the result of enormous investments of labour, time and money. Why should other traders benefit from this but not the famous person himself?, might not be referred to the High Court (under s76(3)TMA 1994) or to the ECJ. As neither party wanted this, Geoffrey Hobbs QC determined that the matter should proceed under another Appointed Person at a future date.

Background

An application was filed to register the name ALEX FERGUSON for various goods and services in classes 6.9,14,16,25,28 and 41. Objection was raised under sections 3(1)(b) and 3(1)(c) of the Act with regard to ‘image carrier’ goods in class 16. Following division of the application - according to s. 41 (1)(a) and Rule 19 of the Trade Marks Rules 2000 - the main part of the application was registered in December 2005 as the ‘A’ child.

Regarding the objections, the Hearing Officer referred to Registry Practice as set out in section 21 of Chapter 6 of the Work Manual. The relevant passage is 21.2 ‘Mere Image Carriers’: “The name of a famous person or group is likely to be perceived as merely descriptive of the subject matter of posters, photographs, transfers and figurines. Names of famous persons or groups are therefore unlikely to be accepted by consumers as trade marks for these goods because they will usually be seen as mere descriptions of the subject matter of the product. Objections will arise under Section 3(1)(b) & (c) of the Act.” Other guiding principles were DOUBLEMINT and POSTKANTOOR from the ECJ on the meaning of Article 7(1)(c) of the Harmonisation Directive (= Section 3(1)(c)), LIBERTEL, COMPANYLINE and LINDE on Article 7(1)(b) (=Section 3(1)(b)), as well as the Opinion of the Advocate General Jacobs in the New Born Baby case (C-498/01P, par. 27-29). The latter held that it was an essential characteristic of many toys to represent something, e.g. a doll to represent a baby, and this was one of the ‘other characteristics’ of the goods or service of Article 7(1)(c) which precludes registration of trade marks “which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service or other characteristics of the goods or service.” The inference in the present case was that, for example, the name on a poster that depicted subject matter relating to Alex Ferguson, would be a representative ‘other characteristic’ of the poster, making it an ‘Alex Ferguson Poster.’

Armed with these authorities, together with reference to an almost identical case in LINKIN PARK - the name of the famous American ‘nu metal/rapcore’ band -(decision O-035-05, Richard Arnold QC), the Hearing Officer determined that the objections would be maintained in respect of the relevant goods.

The Appointed Person

Registry practice establishes that "where a famous name is concerned (and where the reputation does not stem from a trade in the goods/services applied for) it is possible that, when used in relation to certain goods/services, the name may appear to the average consumer as an indication that the goods/services are about the person whose name it is rather than as an indication that the goods/services are supplied by, or under the control of, one undertaking." As the most recent case on this precise issue, LINKIN PARK is mentioned again by the Appointed Person where the latter opined that, if anything, the Registrar's practice is unduly lenient to applicants. Lack of consistency in the Registrar's policy and logic regarding registrability of famous names was a point in dispute. The objection in LINKIN PARK was waived in respect of calendars, decals and stickers but maintained for printed matter, posters, poster books and lithographs. The boundaries were not at all clear. Also, contrary to what might be expected from NEW BORN BABY, figurines were allowed for Linkin Park as well as Alex Ferguson. So where is the cut-off point? And the question of why ‘punish’ an entity just because of its celebrity status, was brought up. Further more, even during the Linkin Park hearing, a reference to the ECJ was brought up as a possibility but not taken up by either party.

Geoffrey Hobbs QC also reflects that in light of the arguments put forward against the disputed class 16 goods in the present case, “it is, to say the least, interesting that no such assumption appears to have stood in the way of the divided application for registration which was allowed to proceed in Classes 6,9,14,16,25,28 and 41”. Again, the consistency issue...

The appeal against the Registry’s decision (which it was agreed broadly followed Registry practice) went to the root issue. The appellant pleaded inequality of treatment, stating that the Registry’s practice is ‘...unlawful as it discriminates against that individual on the basis of their status, namely that they are famous, and that such discrimination is contrary to the provisions of the European Convention on Human Rights which were established in English law by virtue of the Human Rights Act 1998’. Article 1 of the Convention establishes that ‘every natural or legal person is entitled to the peaceful enjoyment of his possessions...’ [it being argued that a registered trade mark is such a possession] and Article 14 states: ‘the enjoyment of the rights and freedoms set forth in this Convention shall be secured without discrimination on any grounds...’

In his Notice to the parties, the Appointed Person took the view that indeed the question of celebrity status raised a question of general importance as to the basis on which celebrity could be regarded as an impediment to registration under harmonised law. OHIM appeared to have a very different approach (although more information was needed on this and how other Member States dealt with the matter). (As an aside, there were no such obstacles on absolute grounds raised at the OHIM for the LINKIN PARK CTM registration). Other cases were also mentioned: DIANA PRINCESS OF WALES Trade Mark [2001] ETMR 254 and AMBERLEIGH HOUSE Trade Mark [the Race Horse], 0-258-05, 16 September 2005. Mr Hobbs therefore requested representations from the Appellant and the Registrar as to whether the appeal should be referred to the Court under section 76(3)(a) of the Trade Marks Act 1994 or whether there should be a request for guidance on interpretation from the European Court of Justice under Article 234 of the EC Treaty with a stay of proceedings in the meantime (this right of the Appointed Person having been confirmed recently by the ECJ in ELZABETH EMANUEL, C 259/04).

At the preliminary hearing, and as presented in their skeleton arguments, neither party was willing without further ado to pursue the avenues for determination as suggested in the Notice. And as Mr Hobbs had already commented on the issues brought up by the appeal he decided that it would be best for another appointed person to decide on the matter in dispute. The outcome will be awaited with great interest.

This article first appeared in the July/August 2006 issue of the ITMA Review