Nick Rose is a partner in the IP/IT department at Field Fisher Waterhouse.
The recent decision in the Wagamama v City Centre Restaurants case (unreported) has highlighted the difficulties IP litigators face in predicting how the courts will interpret parts of the Trade Marks Act 1994 which came into force on 1 October 1994.
Section 10(2) of the 1994 Act provides that there is infringement of a trade mark by a third party who uses an identical or similar trade mark "where there exists a likelihood of confusion on the part of the public, which includes the likelihood of association between the sign and the trade mark". The concept of "likelihood of association" provides a broader scope of protection for a trade mark proprietor under Benelux law.
Lawyers and commentators on Section 10(2) have always assumed, until August this year, that the UK courts would adopt the Benelux interpretation of likelihood of association and that protection would be extended beyond having to prove confusion in the minds of the public in every case of infringement. Not so. In the Wagamama case Mr Justice Laddie held that it was not the intention of the Council Directive on trade marks to adopt Benelux law and that if this had been the intention of the UK Parliament there would have been a provision in the 1994 Act to this effect.
If the concept of likelihood of association is different to the decided cases in the Benelux countries, then what does it mean? It is difficult to know what advice to give as to the scope of protection provided by Section 10(2).
These problems are also highlighted in the Direct Line jingle case which Field Fisher Waterhouse is currently handling. We are acting on behalf of a musician, Simon Franglen, and his publisher, the Music Gallery, in proceedings for copyright infringement against Direct Line Insurance and its advertising agency regarding their use of the cavalry charge jingle.
This case arose following Direct Line's application to register the jingle as a trade mark. Under Section 5(4)(b) of the 1994 Act the application, if it proceeds, would be opposed on the basis that the use is "liable to be prevented" by earlier rights, in this instance copyright. If we had not issued proceedings, the Registrar would have had to interpret rules of law, decide questions of fact and examine rights conferred by statute and the common law way beyond the scope of his normal remit.
As we have issued proceedings, the Registrar may be spared this fate in the Direct Line case, but no doubt other similar cases will arise and it is difficult to see how the Registrar is going to deal with it.
The Trade Marks Registry was never intended to deal with disputes regarding ownership of copyright.