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This is our first “Law & Business” podcast episode recorded during the International Bar Association annual convention. This year it was in Sydney, New South Wales, Australia.
With John Rubinstein formerly of Rubinstein Phillips Lewis Smith Ltd. of London, Episode 25 of the “Law & Business” podcast covers differences between the American and British trademark systems and differences in law. One particular example is “The Prince of Comfort” (originally in German) and how it may have a lack of distinctiveness in. John Rubinstein had interesting issues in registering “GQ” as a trademark.
This was John’s first podcast episode ever – and he did a fantastic job. John and Anthony also discuss how other trademarks are registered and how strong, for example, the “Burger King” trademark is. (Please note: In Australia, it’s Hungry Jack’s, so there’s no doubt that the trademark there is arbitrary.)
John’s particular focus is disputes concerning publishing, intellectual property, the media, art, commercial contracts, professional negligence and IT.
Over the years John has applied existing and evolving legal principles to deal with technological developments in IT, electronic media and communications. He has also promoted, and developed an expertise in privacy related law.
John Rubinstein, Rubinstein Phillips Lewis Smith Ltd.
A member of the International Bar Association since 1989, John served as Co-Chairman of the Art and Cultural Property Law Committee from 1998 to 2001. He speaks fluent French and conversational Italian.
Here is a lightly-edited transcript of the podcast episode:
Anthony Verna:
And welcome to the Law and Business podcast. I’m here with John Rubenstein from Rubenstein Phillips Lewis Smith in London. How did I do?
John Rubenstein:
That is brilliant, Anthony. And we are both in Australia and we’re all jet lagged.
Anthony Verna:
I’ve been here for a couple of days. That jet lag for me is…
John Rubenstein:
So you reckon that if we put up for an Australian trademark called jet lag, we’d be ruled out for descriptiveness.
Anthony Vera:
Well, what are we selling with jetlagged?
John Rubenstein:
Travel services?
Anthony Verna:
I think that might be a little on the descriptive side of life.
John Rubenstein:
Well, I’d argue that this was exclusive to the exercise of traveling and the selling of traveling services. So, this provides us with a suitable entry to the topic of, whether a mark is registrable because it is inherently incapable of being distinctive and whether it is descriptive. And I guess that when you travel, part of the quality of traveling is being jetlagged.
Anthony Verna:
Not always. If you’re going North and South in the same time zone, there’s, there’s no jet lag. Go New York to Miami. There’s no jet lag.
John Rubenstein:
Ahh, but see, quality doesn’t have to be consistent quality. And, we have a number of cases in the United Kingdom, where we are subject to the European union regime on trademarks. Regulation 40 of 1994 and Trademarks Act 1994 which has stood the test of time.
It’s become an interesting battleground between brand registrars and the trademarks registrar who is fighting a rear guard action, using the swing doors of sections three, one B, which is an absolute prohibition. If the mark does not distinguish the goods as belonging to one particular owner, it will be ruled out, and section three one C of the act, which rules out marks which are descriptive of what is being offered.
Anthony Verna:
So it sounds like that the UK intellectual property office as compared to the United States patent and trademark office likes to kick things out a little bit more. And it sounds as if there are some brands that the UK IPO doesn’t like even though they would technically qualify as trademarks.
John Rubenstein:
Well, the reality is you have to work quite hard in some cases to persuade the assessor that the mark is capable of being registered. And it is to my mind, often a game of linguistic ability to persuade hearing officers who have particular criteria established over now 20 years to depart from the practice. And my guess is that it’s a sort of first weeding out process. I mentioned to you a particular slogan called choose your weapons, which failed.
Anthony Verna:
I like it.
John Rubenstein:
Well I thought it was a very good one, but it appeared on tee shirts and it didn’t appear consistently across a brand which had been in use for a period of time and it appeared to be rejected on the basis that it is just a tee shirt decoration and inherently incapable of distinguishing the tee shirt itself as the product of a particular owner. So, when the relevant section of the public looks at the tee shirt, it will just see a nice tee shirt would choose your weapon.
Anthony Verna:
So in the United States we would have a rejection called ornamental use of the trademark and whereas the trademark is just a phrase that’s on top of clothing, not usually where consumers expect to see a particular brand. Is that the same issue here that you’re having with this mark?
John Rubenstein:
Let’s put it like this way, if there’s an established mark which is imprinted on a tee shot, then that doesn’t fall foul, that exercise. Otherwise, proprietors of Louis Vuitton and Chanel and other luxury goods would have some difficulty using the their brand logos actually affixed to the goods. There’s obviously the ultimate purpose of the trademark is to identify the owner of the goods.
Anthony Verna:
Yes. But some of those examples are a little different as well. So like Louis Vuitton and Chanel, we fully as consumers expect to see Chanel stamped on a bag. We fully accept, expect to see Louis Vuitton stamped on the bag as consumers, at least in the United States. The way that the case law has come down is that as consumers we don’t expect to see that phrase on a tee shirt.
John Rubenstein:
So, this may be the difference between an invented mark and a slogan.. So, I don’t know, how do you treat slogans in the United States?
Anthony Verna:
As any other trademark. Honestly, so that if the issue here with your choose your weapon example in the United States would be ornamental use. So in order to get over that particular hump, my advice to apparel clients is always either the tag on the back of the tee shirt needs to have the phrase or slogan that you’re creating or you need to create hang tags as well. Because that’s then going to qualify as trademark use in the United States. So now it’s not ornamental use.
John Rubenstein:
We wouldn’t get away with that in the United Kingdom. And I wanted to tackle you on something that we raised in preparation for this discussion,
which was the registration of Burger King, which probably in the United Kingdom would be regarded as straightforward, incapable of registration because it is purely descriptive.
How did it get registered in the States? Well, I obviously don’t have the history of, of the mark in front of me and I don’t have the case file. My thinking is that it’s not really descriptive is that it is suggestive of having the best burger you’ve ever had. So, whether or not that’s the truth is a different story of course, but to me being the king of burgers means that it is the best burger that the consumer has ever had.
John Rubenstein:
Well perhaps the best citizen in the burger world. Then taking that through, that’s interesting that this is within shyness about registering slogans in the United Kingdom. There was a well name a case involving Audi’s, Bush Bong, [inaudible] technic, which literally means progress through technology. And this went all the way to the European Union’s Court of Justice for determination as to whether or not it was capable of identifying the goods as those of Audi manufacturers and the court reviewed the criteria and overruled the lower European Union courts who had reviewed this mark by stating that you cannot add extra tiers of registration ability requirements to slogans apart. It should be treated just the same as any other mark. But that required a trip to the European Union Court of Justice and basically it has to be immediately identifiable as the goods of the proprietor to the relevant market. And I always find the relevant market a very interesting concept.
Do you have a similar view in the States?
Anthony Verna:
Not necessarily for slogans because we just treat slogans as if it were any other trademark or service mark. So that if a an automobile company create an ad slogan and the only place that slogan is going to be found in the advertising materials, it still is an acceptable trademark because the owner the company, excuse me, the company, the user, the applicant of the mark is using it in conjunction with those goods and services and for goods and services. The advertising is acceptable.
John Rubenstein:
I have a suspicion that the particular mark became inherently identified with Audi after a period of use. But this is a problem for trademark brand advisers and people who advise the use of marks because often there is no acquired use to justify any distinctiveness. And so, it falls the first fence. And this is a problem which a lot of brand consultants have trying to devise new marks that haven’t reflected somebody else’s goods. It’s a difficult market to find something that is a slogan, which is immediately catchy without it being regarded just as the slogan advertising the goods rather than a trademark. And there’s a period of transition which needs to be overcome. And it’s very difficult to register a slogan straight away cause if it doesn’t refer to the mark that full avoiding descriptiveness right. It fails to distinguish the proprietor as the owner of it because there is no knowledge amongst the populous as to who is the owner of the mark.
Anthony Verna:
Whereas in the United States, if it is descriptive, it is just descriptive of the goods and services or more generic, you know, it’s just the actual goods and services themselves.
Whether or not it’s a slogan or some kind of say line of products from a company, that relevance is never actually taken into effect. Sometimes the difficulty with registering, uh, slogans comes in the fact that advertising itself is not an accepted specimen in the patent and trademark office. So there has to be some other uses of, of the slogan with the goods and services. And so sometimes that can be a little tricky. But again, there are lots of ways around that particular issue.
John Rubenstein:
I had just recently on an application for registration of a mark, I had this problem where the registrar took the view that the slogan was purely an advertisement for another the services offered under another mark.
Anthony Verna:
Whoa.
John Rubenstein:
And yeah, I know my client had two marks. One was already registered and the other one it wished to register alongside. And the registrar adopted an argument that the secondary mark was actually an advertisement for the services offered under the first mark. So descriptive and incapable of distinguishing in itself the services being offered by the client. But we’ve adopted based slightly different approach in the European Union. There’s a nice case called Odum versus ERPO Mobile Work decided in 2004, concerning a German mark, which was as follows, der Prinz der Bequemlichkeit , which literally means the prince of comfort. And it went all the way to the European union quarter justice second chamber because it had been declared that if you described a piece of furniture as the prince of comfort, it is descriptive of the furniture in question.
Anthony Verna:
Meaning that it’s descriptive of being comfortable.
John Rubenstein:
Well, this is an interesting argument because of furniture. Furniture is not per se comfortable. It is. It can be…
Anthony Verna:
You and I have been to plenty of conventions where the furniture’s not good.
John Rubenstein:
Well that’s right. But the prince of comfort is quite a lot different in describing furniture than, for example, Burger King is to describe a collection of meat patties. I’d say that Burger King using the word burger, describes the goods which are being piped up by the use of the mark. Whereas if you say the prince of comfort, why does that actually hype furniture? Because comfort could relate to a variety of occupations. Comfort is not dependent on furniture. So, this, as I say, was very tightly contested and that it is really that case along with the Audi case, which caused the European Union court justice to state, clearly that slogans should not be subjected to a stricter test for assessment of distinctiveness and inherent capability of distinguishing the goods of one trader from those when other than ordinary marks. Do you have any cases in your pantheon of trademark decisions which have addressed the question of distinctiveness?
Anthony Verna:
Well, for the
United States, we have several categories. And it’s not necessarily case law, although case law has defined the sharpened those definitions. But we have five categories of trademarks. One would be a generic word, chair, lamb bed, which is not registrable under any conditions. And then descriptive marks do describe the qualities of the goods and services. So red ball, orange ball, things like that, that unless there is secondary meaning is not registrable. And for descriptive marks, secondary meaning requires some showing that the consumer base, your target market relates his descriptive mark that you have to your goods and services.
John Rubenstein:
I’m interested in what you say about red bull. Would the color itself be registrable in relation to water called 45, what are called tonic drinks?
Anthony Verna:
Huh. Well a tonic drink is not red.
John Rubenstein:
Correct. Except cherry aide.
Anthony Verna:
Okay. Well that’s only one of many. Cause when I think of tonic drinks, I’m usually just thinking of tonic water. Sodas are tonic as well.
John Rubenstein:
So Dr Pepper. I’ve never had Dr Pepper. I’ve avoided it through my life and I’d managed to survive.
Anthony Verna:
I’m going to get in trouble with some, but at least I know a few people who listen to this. But to me, Dr Pepper is hideous.
John Rubenstein:
This is freedom of expression of the first amendment. You will be quite safe on that score.
Anthony Verna:
But to me red doesn’t seem to be an inherent quality of any of tonic drinks in general. So, I would say that that’s registerable. In the United States, the classic example is M&M’s where the ad slogan M&M’s melts in your mouth, not in your hand.
John Rubenstein:
Yes. Uh, isn’t that descriptive? Yes. Straight forward descriptive.
Anthony Verna:
Straightforward Descriptive. Yes.
John Rubenstein:
Was it registered?
Anthony Verna:
Yes.
John Rubenstein:
No. How do they get around that?
Anthony Verna:
Well, again, it’s the secondary meaning portion of descriptiveness where they had plenty of examples from using that particular slogan.
John Rubenstein:
It’s repetition, repetition, repetition, repetition. They managed to get it into the state where the registrar would recognize that it was registerable…
Anthony Verna:
because consumers understood that that phrase was associated with those goods and services. So it’s repetition, it’s partially fame because without money you’re not going to get to that particular level where consumers know, okay,
John Rubenstein:
So now we take it back to the, what I call the swinging door, that if you will not inherently distinctive and then you risk being descriptive. And if you are inherent, if you are descriptive, you cannot be inherently distinctive.
And we had an interesting case and remember I started off with choose your weapons. Yes, there was a Paradelle case which involve the use of the word money hub, but the words money hub for financial and accounting software. And it was opposed and the opponent argued that this was purely descriptive of the function of what was being done by this
product.
Anthony Verna:
Because it was managing, it was managed money and financial transactions for its consumers.
John Rubenstein:
But actually when you look at what a hub is, it wasn’t exactly descriptive because when you use the expression, money hub, what does it actually mean? And the registrar took the view that although it alluded to the function of the product, it didn’t actually describe it. So, when we look at the prince of comfort, that’s not actually talking about a piece of furniture, it’s talking about an illusion as to what it may convey. So, they managed to get around the problem of being descriptive at the same time as the mark being capable of distinguishing the goods of that. A producer was, in fact, it was the software that producer from the software produced by everyone else. And so that currently is the state of play in the United Kingdom. Brand consultants have to be a little more careful to make sure that whatever they just produce is not assess an exercise in making block applications and waiting for 28 of the 30
fail because it just clutters up the register.
Anthony Verna:
Sure. Well and in the US the register is pretty cluttered anyway. So, I don’t think that we’re worrying about getting the kicking marks out to do that. But in the US the way I would have attacked some of these, some of these issues is that I probably would have argued suggestiveness cause we don’t have this elusive use, I would have argued suggestiveness because the prince of comfort, obviously he’s not describing furniture because some furniture is not comfortable as you said, but we are suggesting a state how a consumer should think.
John Rubenstein:
Well this is the product of advertising. But it is whether or not when addressed to the market to which the goods are going to be sold, subsistence supplied, they would see that as distinctive of the goods or all services of the supplier. And those are basically the tests that have to be applied. We’re in a fairly comfortable place in my view now and a lot of the applications, this result of brand consultants making block applications for registration of masses of all the slogans. And they use a scattergun approach. And this is, in my view, making the registrar’s job quite difficult because they have to consider and deal with each of these applications. Naughty, time-consuming chart. And, it’s very cheap in our country to apply for a trademark. And if it doesn’t get past the first hurdle, you just abandon it. It’s actually cheaper to do that than to go and research whether or not the mark is capable registration in advance. So maybe our registrars are giving us a good service by ensuring that we don’t see loads of common garden expressions or new trademarks only appear which would otherwise be used by the public in their language. So that we all, that’s a state play in the United Kingdom.
Anthony Verna:
And in the United States. I always tried to discuss with my clients the need for having a mark that’s at least suggestive. Hopefully clients come to come to both of us with arbitrary trademarks and fanciful trademarks. And in the United States, arbitrary trademarks are just words and phrases that have no meaning to the goods and services. And fanciful marks are traditionally like Kodak, something that has been completely invented for this particular use. And I always try to tell clients that there’s little difference between what American trademark law says and what your marketing advisor says because and we see this, I see this all the time on Shark Tank, which is the American Dragons Den where the sharks are sitting in there and they say, “Well, I don’t really know what your product does because you’ve created a name that makes no sense.” or something to that effect. So American marketers are saying, name your products, what they do and the strong trademark law is very much countered.
John Rubenstein:
Yeah. Well, some years back I registered something in the United Kingdom, mark GQ and on its face it didn’t describe the tool, what the goods were. Some of the listeners may be familiar with GQ.
Anthony Verna:
Of course.
John Rubenstein:
Over the years, it started off as a publication called Gentleman’s Quarterly. And when you see that, you understand the allusion, but GQ doesn’t describe the goods. It was a two letter mark. And often our trademark hearing officers used to try to rule out marks because they would say that it describes the content of the item.
John Rubenstein:
Well don’t tell me that happened to you.
John Rubenstein::. So, for this application, yes, it’s what interested gentlemen. That’s very descriptive in some people’s view and you’ve got to have to deal with these sorts of approaches from a hearing officers who have the parameters and grammatic and semantic fineness is not really in their comfort zone.
Anthony Verna:
Understood completely. For an acronym like that in the United States, if it’s an acronym, you actually need to define the acronym in the application. Is that required?
John Rubenstein:
No. No, but it was a two letter mark and two letter marks have their own inherent difficulties.
Anthony Verna:
Of course. Yeah. Of course. The other thought that I had was when you are discussing a new mark with a client, is there a particular operating procedure you have at the beginning, doing a trademark search finding or do you want to just take the mark and file it and then discuss it with the client?
John Rubenstein:
Because this is a question of economics. So, if you want to establish a new trademark, you could probably spend an awful lot of money searching. Diageo is the famous example of Guinness looking for a very distinctive group brand and they spent millions on it over a very long time. I have an example of a mark which will remain nameless, where my clients launched a software product and they were held to ransom because in a small county in Germany there was a person that who had produced software, which because of its name clashed with my clients Europe-wide launch, they had not done a Diageo type search. And because they were launching this product, they had to pay a very large ransom to buy this little business’s mark in the middle of a tiny county in Germany.
So, an unregistered mark can stop the launch of a product even though you have applied for registration. And if you haven’t got that registration at the time you launch, then you are vulnerable to being ransomed in my view. I tell the client that you can pay for a Rolls Royce search is still not even guaranteed. My experiences with Spanish agents, they will try to assert the mark’s full file under the, what our equivalent section ten two to trademarks that 1984 that it is a similar mark and sufficiently similar to be able to block the application. Unusually, it involves a negotiation which is rather expensive. So, if you do an online search and you do a company’s register search in your own domestic territory, you can assess a market is as a sort of a first finger in the wind test and then you commit the registration fee. Having done the finger in the wind test, you then are willing to argue that up to the point of opposition. If an opposition appears, you look at it and then your client takes a view whether or not to cut its losses and find another mark or to persist with this one and fight the opposition. s long as you are fairly confident that you can show the distinction between the two marks, you should be okay. But then the emergence of an earlier mark tends to be fatal.
Anthony Verna:
And in the United States it’s very analogous. Yeah. I have seen registrations in the US that say things like, acceptable and all are good in all 50 States except for the counties have X, Y, and Z in Minnesota because there’s a company that somehow had discovered that this application was going through, never registered their common law trademark what they’ve only operated in three counties in Minnesota.
John Rubenstein:
We have the same in the European union, you can break down to individual company registry applications and there have been cases where in the European in set for probably office, you, somebody who uses a mark in Finland can block its use in Ireland, but there’s nothing to stop people making Madrid application for other territories. And it’s not, the Madrid application is not CUHK Terminus with the European union jurisdiction. So, you may wish to go territorially.
Anthony Verna:
All right, John, thank you so much for coming in today and it was a blast.
John Rubenstein:
We are going to go and sample some coffee here to get over this new travel agency slogan. Jet Lag! Thank you so much, Anthony. It’s been a pleasure.