Sunday, 20 January 2013

Best IP judgment never written: the winning entry

Last year JIPLP ran a competition in which it invited entrants to submit a short intellectual property judgment, this being the best IP judgment that had never been written.  David Flynn (FRKelly, Dublin, Ireland) was adjudged to be the winner, and his winning entry is reproduced below.  Congratulations once again, David,  and we hope that you will enjoy your prize (£250 worth of books published by Oxford University Press, plus a one-year personal subscription to JIPLP).  The runner-up was Robin Fry (DAC Beachcroft, London), whose entry we shall be featuring later this week.

The winning entry goes like this:

THE HIGH COURT
BETWEEN

Hola, S.L, t/a HELLO! Magazine    
 Applicant

- and -

DF Media Limited (DFML) t/a GOODBYE! Magazine
     Respondent



      MR. JUSTICE JOHNSON:
1.    Hola, S.L, is the proprietor of Trade Mark registration No. 3950638 HELLO! which is registered for “magazines with celebrity content.” DFML has been using a GOODBYE! sign on its magazine which also features celebrity content. Hola claims that DFML has infringed its Trade Mark.
2.    Hola owns a well known magazine titled HELLO! Since 1988 HELLO! has built up a considerable reputation with a readership of two million in the UK. The magazine provides “respectful coverage” (if there is such a thing) of celebrities and royals.
3.    At the other end of the spectrum is DFML and its publication GOODBYE! It features Z list celebrities snorting Class A drugs, tumbling out of nightclubs and engaging in extra-marital affairs (behaviours that HELLO! would usually prefer to keep swept under the carpet). The magazine is only two months old and sales have been slow.
4.    Hola alleges that DFML has infringed its Trade Mark. This infringement claim is based on the considerable reputation Hola enjoys in the HELLO! mark and the conceptual similarity between the marks. Both publications offer mindless glimpses into the lives of celebrities. Hola maintains that consumers will associate the GOODBYE! mark with Hola’s HELLO! mark; thereby taking unfair advantage of the repute of the HELLO! mark.
5.    The Marks:                                                                                                                                                                                                                          
Earlier Mark
Later Mark
                                                             





6.    Visually, the signs are similar (duh!). The words “HELLO” and “GOODBYE” are composed of a bright white bold font on a fire engine red background (who needs Pantone colour references anyway?). A distinctive exclamation mark has been placed at the end of each word.
7.    Conceptually, “HELLO” is a greeting used in the English language. “GOODBYE” is a means of saying farewell and is an antonym of “HELLO.” In Adidas v Fitnessworld it was established that Article 5(2) of Directive 89/104/EEC protected against the use of a similar mark without a finding of confusion on the part of the consumer - it is sufficient that the “relevant section of the public establishes a link between the sign and the mark.”
8.    The GOODBYE! mark dilutes the distinctive character of the HELLO! mark. Picture the following scenario. An avid reader of HELLO! Magazine is browsing the magazine rack of her local supermarket. She picks up GOODBYE! and immediately recalls the  HELLO! mark. Because of the similarities between the two marks, and the fact that both magazines focus on celebrity content, she assumes the two publications are related. She finds GOODBYE! somewhat tacky, the facts to have been distorted and the quality of journalism to be low.
9.    She shudders when she sees HELLO! beside GOODBYE! Having just skimmed through GOODBYE!, she believes it is associated with HELLO! Suddenly, the power of attraction of the HELLO! mark has been severely reduced and its repute has been tarnished by the GOODBYE! mark. The GOODBYE! mark has caused detriment to the distinctive character of the HELLO! mark. She decides not to buy HELLO! and leaves the supermarket with a copy of OK! Magazine; the lesser evil of the three (or so she thinks: all three magazines are painful to read).
10. Clearly the GOODBYE! mark has taken unfair advantage of the distinctive character and the repute of the HELLO! mark. DFML could easily have chosen to use a different mark. Instead, DFML decided to “ride on the celebrity coattails” of the HELLO! mark. This is “free-riding” at its finest and is what Article 5(2) of the Directive is supposed to protect against (L’OrĂ©al SA v Bellure NV). 
11. Why anybody would read either of the above magazines is beyond my comprehension.  Leaving aside my personal opinion on the content of both magazines, this Court finds in favour of Hola, S.L. and upholds the claim of infringement. 

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