Trademarks

Claire, along with a couple of thousand others around the world, received a letter from Warner Bros’ legal department threatening legal action if she did not hand over her domain name – harrypotterguide.co.uk.

Warner Bros, faced with a public relations disaster on the eve of the release of the first film, eventually backed down, but I was left wondering, how did they let this happen in the first place? What possessed them to threaten legal action against young Potter fans?

There were echoes of the ‘Potterwar’ in the recent threats made by KFC against the Tan Hill Inn in Swaledale over the words “Family Feast”, said by KFC’s lawyers to constitute an infringement of its registered trademark.

How could KFC possibly see the actions of one rural pub once a year to be a threat (even if it is England’s highest, and therefore famous in its own right)?

KFC’s trade mark is a common combination of words that is entirely descriptive of the goods for which it is registered. It could not possibly be regarded on its own as being capable of distinguishing KFC’s products from those of its rivals. 

This enclosure of the English language is often seen by big business as desirable. But experience tells us that real brand value comes from marks that are inherently capable of identifying one business uniquely. For example, Kodak is a made up word that is also inextricably linked with a logo and a combination of colours. 

By adopting a phrase that merely describes the products for which it is intended, even if registered as a trade mark, a business does no more than create a rod for its own back. 

For as long as the business intends to use the mark, it will have to clamp down on unauthorised use by others, because if this continues unabated, the distinction that has been acquired through a six or even seven figure investment in promoting that brand will be lost and with that, so will the rights in the trade mark.

Creating distinctive brands is a tricky business. Throwing money at the issue is not necessarily the answer. 

But then, if it was easy to do, the phrase brand value would be meaningless.

 

Matthew Rippon is a partner specialising in intellectual property law at Blackett Hart & Pratt. Contact him on 01325 466794.