Date: 2 December 2019
A win for Carry On films against ITV. The successful partial revocation of a sign corresponding to a film title on the basis of non-use, could have significant wider consequencesfor film-related merchandising.
The lucrative CARRY ON franchise includes 31 comedy films released between 1958 and 1992 and is the second biggest British film series after James Bond.
In November 2016, Carry On Films Limited applied to register the UK trade mark CARRY ON for a variety of goods and services. That application was opposed by ITV on the basis of three earlier UKTMs for CARRY ON.
Carry On Films Ltd contended that the rights to the mark CARRY ON belonged to Mr Peter Rogers (the late producer of the “Carry On” films) who had assigned the rights in the mark to Mr Brian Baker (a director of Carry On Films Ltd, a film producer and close friend of Mr Rogers). However, the UKIPO (in O/051/19) found that most of Carry On Films Ltd’s evidence on this issue was mere assertion.
The Hearing Officer accepted that Mr Rogers believed he owned all the rights to the CARRY ON mark, but the fact that he was one of the producers, involved in all of the Carry On films and “probably became almost synonymous with the mark as he was ever present” did not mean that the rights to the mark rested with him. As the Hearing Officer explained, “the rights to films usually reside with the production company or the studio”.
The Hearing Officer also noted that, despite Mr Baker describing Mr Rogers as “extremely commercial and open in his thinking with respect to how the brand could be exploited to achieve this and to broaden its appeal and awareness” and obvious annoyance at the marks being registered by ITV, “Mr Rogers, and later Mr Baker, never once launched the obvious legal challenge to have the trade mark registrations deemed invalid”.
The fact that Carry On Films Ltd had sought a licence from ITV to use the CARRY ON mark was viewed as tantamount to “legitimising the registrations”, because “if a business truly believed that they had the law on their side they would not go cap in hand to the opponent and seek permission to use what was rightfully theirs, or so they believed, in the first instance”.
Further, the Hearing Officer said that Carry On Films Ltd had “made no secret of the fact that is was fully aware of the trade mark registrations of the opponents, but because it felt these were falsely obtained it believed it perfectly acceptable to submit its own applications which to a large extent duplicate those of the opponents”. To have done so and not directly challenge the validity of ITV’s marks (which would have required Carry On Films Ltd to prove its claim to the rights in the mark) was, in the Hearing Officer’s view, the absolute antithesis of reasonable behaviour. Accordingly, ITV’s opposition succeeded under section 3(6).
In April 2018, Mr Baker applied to revoke three UKTMS owned by ITV Studios for CARRY ON for all goods and services covered by those registrations (except “production, distribution of film” in class
41), on the ground of five years non-use, this time with more success.
The reader may be surprised to learn that, according to the Hearing Officer (in O/340/19), “Permitting a television channel to broadcast one’s film is not use of the mark in relation to entertainment, presentation or networking services; nor would the status of a film as the subject of a syndication agreement mean that the mark itself had been used on or in relation to those services”.
According to the Hearing Officer, ITV’s argument was as follows: if a trade mark proprietor can use its marks in relation to the production and distribution of films, it should be allowed to retain any connected goods and services covered in the specification so as to avoid conflict with other traders using the marks on those goods and services. However, the Hearing Officer did not accept that argument. As she explained, the protection of rights relative to another party’s rights fell under section 5 of the Act.
The only question to be decided under section 46 was how the relevant consumer would describe the use of the mark as evidenced. In the present case, no use had been shown but as production and distribution of film services in Class 41 had not been challenged, those services would be regarded as distinct subcategories by the average consumer.
ITV will continue to distribute the Carry On films but the loss of the trade mark rights for the wide range of goods other than “production and distribution of film services” means that the stream of revenue obtained from merchandising is now closed to ITV. Oo-er, indeed.
Merchandising of intellectual property (IP) rights can be a lucrative addition to a business strategy and we can offer further advice on how to effectively use IP rights to generate revenue from the secondary exploitation of brands.
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