Celebs fight back over forgery
Article from our Summer 2008 edition of InsideIP.
The recent jailing in the UK of two men found guilty of forging and selling signatures of sports stars emphasises the importance of obtaining registered trade mark protection and the rights this gives to the proprietor, as well as the potential difficulties that famous people can face when it comes to protecting their names.
The benefit of registered trade mark protection
Two men, Faisal Madani and Graeme Walker, were sentenced to 9 and 30 months in jail respectively for selling products that were discovered by Trading Standards to be bearing the faked signatures of a number of sports stars including Steven Gerrard, Michael Owen, David Beckham and Jonny Wilkinson.
Section 92 of the Trade Mark Act states that
92 (1) a person commits an offence who with a view to gain for himself or another, or with intent to cause loss to another, and without the consent of the proprietor-
(a) applies to goods or their packaging a sign identical to, or likely to be mistaken for, a registered trade mark, or
(b) sells or lets for hire, offers or exposes for sale or hire or distributes goods which bear, or the packaging of which bears such a sign
If found guilty an offender can face up to 6 months imprisonment or a fine, or both, or in serious circumstances up to 10 years imprisonment or a fine, or both.
Both men were jailed on the basis of several convictions under the Trade Descriptions Act and the Trade Marks Act. Walker was jailed for 30 months, with 4 months to be served concurrently as a result of his 12 convictions under the Trade Marks Act. These included supplying six posters bearing the signature of Jonny Wilkinson.
The decision was welcomed by John Weeks, Cheshire County Council director of community services, who said that “ruthless exploitation of the devotion that fans show their clubs and sporting heroes was exposed on a scale which shocked us and, indeed, helped fund a high street business”.
In the UK there are numerous provisions in place to protect both consumers and trade mark proprietors, including those in the Trade Marks Act and the Trade Descriptions Act which are actively enforced by Trading Standards officers. Section 92 of the Trade Marks Act establishes a criminal sanction for misuse of a registered trade mark. The decision to sentence Graeme Walker and Faisal Madani should be welcomed by trade mark proprietors as it demonstrate that the Courts will imprison offenders under the Trade Marks Act, and this should serve as a warning to other counterfeiters.
Registered trade mark protection for famous names
The case also reminds us of the problems that famous individuals or groups (sports teams, bands etc) face when attempting to protect their names. When a famous name is used in relation to certain goods, the UK Intellectual Property Office can hold that the name will be seen as descriptive of the goods rather than having any trade mark significance (i.e. serving as an indication as to the origin of those goods or services). In these circumstances a trade mark application will be rejected on the basis that it is descriptive and lacks distinctiveness.
The usual approach of the UK Intellectual Property Office is to judge a famous name to be sufficiently distinctive in respect of goods such as printed publications, recorded sounds, videos, t-shirts, scarves etc. because use in relation to these would be likely to imply some form of control or guarantee from the holder or would identify the trade source. On the other hand a famous name is likely to be regarded as descriptive of posters, photographs, transfers and figurines because the name would be seen as descriptive of the subject matter of the product.
Taking advantage of the protection given, the following famous names have been registered:
- UK trade mark registration no. 2175428 MICHAEL OWEN
- Community trade mark registration no. 1796721 DAVID BECKHAM
- Community trade mark registration no. 3458056 JONNY WILKINSON
- Community trade mark registration no. 1610021 BRITNEY SPEARS
- Community trade mark registration no. 3270782 JUSTIN TIMBERLAKE
It is worth noting that the DAVID BECKHAM, JONNY WILKINSON and BRITNEY SPEARS trade marks are registered in respect of “posters” and “photographs”, and this highlights the slightly more lenient approach of the Community trade marks office to registration of famous names.