Trade marks - character merchandising - distinctive character - name of well known historical literary figure

    [Trade Marks Act 1994 s.3(1)(b), s.3(3)(a), s.3(3)(b), s.3(6).]
    C applied to register the as yet unused mark JANE AUSTEN for use in relation to toiletries, soaps and perfume. The application was opposed by T, the trustees of the Jane Austen Memorial Trust. T owned Jane Austen's house and ran a museum selling Jane Austen related souvenirs. T opposed the application on a number of grounds, including lack of distinctive character under the Trade Marks Act 1994 s.3(1)(b); that such use would be likely to deceive the public as to the nature of the goods in terms of s.3(3)(b) and the application was in bad faith under s.3(6), given the damage it would do to Jane Austen's reputation. C contended that Jane Austen had not reached the point where a purchaser would buy the name, rather that a product, and as such would be distinguishable in terms of A's goods.
    Held, refusing the application that (1) factors to consider in determining how a literary or artistic person's name was perceived and whether it amounted to trade origin, included: the extent of the reputation concerned; whether there was a trade in associated souvenirs; established rights in the name; extent of media and public interest and the type of goods for which registration was sought, ELVIS PRESLEY Trade Marks [1999] R.P.C. 567, [1999] C.L.Y. 3574 TARZAN Trade Mark [1970] F.S.R. 245, [1970] C.L.Y. 2859 referred to: (2) well known literary figures were likely to generate a high level of demand for merchandise, due to their fame and geographical associations. Lesser figures could, however, fulfil the functions of a trade mark. In the instant case, however, Jane Austen's name enjoyed high standing in literature; (3) T had developed a trade in Jane Austen related souvenirs which was the only use the public were familiar with. Unless educated to see the name differently, it would not amount to a badge of origin. Therefore, T's objection under s.3(1)(b) succeeded; (4) the objections under s.3(3)(a) and s.3(3)(b) failed. There was no discernible public policy interest exceeding the rights that could be built up and protected through other areas of law. The public would not be deceived into thinking that C's goods had T's approval or were connected with Jane Austen's literary works, and (5) the objection under s.3(6) also failed. There was no general presumption against registering a historic literary figure's name and registration would not be detrimental to Jane Austen's standing or literary reputation.
    JANE AUSTEN TRADE MARK [2000] R.P.C. 879, M Reynolds, TMR

"Current Law" February 2001