Jeremy Dickerson is an intellectual property lawyer at Hammond Suddards.
The Titanic has resurfaced in a three-cornered trade mark dispute between Harland & Wolff – the builders of the original ship which sank in 1912, chef Marco Pierre White – who has opened a restaurant in the same name, and Twentieth Century Fox – the makers of the multimillion dollar film.
Harland & Wolff are suing Marco Pierre White on the grounds of registered trade mark infringement, for using the name Titanic for his restaurant in the former Regent Palace Hotel, near Piccadilly Circus, and for items in his restaurant such as napkins and plates, which bear the name Titanic.
Interestingly, there is no claim for passing-off, as is usual in trade mark cases. Perhaps this is because the public is more likely to associate the restaurant with the film than the ship builders, and therefore Harland & Wolff would not be able to get the claim off the ground.
In a separate action, Twentieth Century Fox is applying to revoke the Titanic trade mark, on the grounds that it is devoid of distinctive character, is likely to deceive the public, that the application was made in bad faith, and that the mark is identical to an earlier mark.
The writ against Marco Pierre White, and the Originating Notice of Motion against Harland & Wolff, were issued within 10 days of each other, in late November and early December last year.
However, one of the litigants could use the fact that the Titanic brand name is causing such legal shenanigans to his own advantage.
It is likely that Twentieth Century Fox's revocation action will proceed faster through the courts than Harland & Wolff's infringement action. This could be very fortunate for Marco Pierre White, since he is likely to be able to have someone else – Twentieth Century Fox – fund what could effectively be his own counterclaim for revocation of the trade mark which, if successful, will knock out the claim for infringement.
It is unusual for a trade mark to be given for a word on its own which is employed in common usage. generally, if a common word is to be used as a trade mark it must be expressed with some distinctive typography or used together with a distinctive logo.
The Titanic – record-breaking film of 1998, tragedy at sea and London restaurant – is therefore set to hit the headlines again in 1999 in the form of a legal thriller.