In today’s Irish Times, legal affairs correspondent @CPKeena investigates a European Trademark for the word ‘Slane’. You can check out the article HERE
Actually, the issue that has arisen is very common. The difficulty is that most people and businesses don’t know about it, and usually only find out about it the hard way. Worse still it can be quite a complicated legal issue.
At it’s simplest and most basic (very basic) a trademark grants the owner exclusive rights to use the trademark in respect of the goods or services for which it’s registered. You can find more about the basics here, but basically there’s 45 classes of goods/services (the Nice Classification System) and you choose what goods/services you want your trademark to cover in your application. A ‘word’ mark, as opposed to what you might call a ‘logo’ grants the most protection generally, because it covers any use of the word, probably whether in word or in logo form.
So, if someone owns the trademark for the word ‘Slane’ (and they do, hence the article and this post), they are entitled under to stop anyone else using the word Slane for identical or similar goods or services.
With me so far?
NOW, here’s what the word ‘Slane’ is registered for by two registrations owned by Slane Castle Irish Whiskey Limited:
- Class 9 – Decorative magnets, decorative switch plate covers, mouse and mouse pads, sunglasses, protective eyewear, headphones, musical instrument amplifiers and cell phone cases.
- Class 16 – Posters, notepads, paper napkins, mounted and un-mounted photographs, paper coasters, calendars; pens, pencils and cases therefor; notice boards, namely, dry erase writing boards; postcards, banners made of paper, tablecloths of paper, paper placemats, desk pads and stationery-type padfolios, desk top organizers.
- Class 18 – Athletic bags; Backpacks; Duffel bags; Wallets; Key cases; Knap sacks; Luggage; Luggage tags; Tote bags; Umbrellas.
- Class 20 – Non-metal key chains, non-metal key rings, wood boxes and chests, glass signs in the nature of furniture mirrors, tables, picture frames, wooden bar stools, folding chairs and portable stadium seats, ceramic and glass bottle stoppers with cork, corkboards and bulletin boards.
- Class 21 –Glass and plastic drinking containers, flasks, ceramic mugs, ceramic pitchers, ceramic jugs, wood coasters, cork coasters, ceramic coasters, swizzle sticks, bowls, household food and beverage containers, glassware for beverages, metal serving trays of non-precious metal, portable beverage dispensers, portable picnic coolers, wooden cutting boards, portable drink dispensers, plastic water bottles sold empty.
- Class 25 – Footwear; headwear including caps, hats, cowboy hats, headbands, straw hats, visors, bandanas; clothing, namely, aprons, sleeve garters, t-shirts, golf shirts, work shirts, baseball shirts, woven shirts, shirts, tops, tank tops, sweatshirts, sweatpants, jogging suits, pants, dresses, skirts, sleep pants, pajamas, robes, shorts, jeans, jackets, coats, belts, neckties, neckwear, scarves, suspenders, leather jackets, rain suits, vests, parkas, gloves.
- Class 28 – Adult collectible die-cast miniature scale model vehicles, balloons, games, playthings and sporting goods, namely, dart boards, dart sets consisting of dart flights and darts, pool cues, pool ball racks, pool balls, cue racks, parlor games comprised of wooden blocks, outdoor activity games in the nature of pitching bungs into galvanized buckets, baseball bats, golf putters, golf ball markers, golf balls, golf clubs, hand grips for golf clubs, golf bags; gaming equipment, namely, poker sets comprised of cards, chips and arm garter sold as a unit; metal golf towel clips; cornhole sets, namely, bean bag games, and Christmas tree ornaments, guitareoke system, namely, player-operated guitar-shaped video game controllers for electronic video game machines.
- Class 33 – Alcoholic beverages, including distilled spirits.
- Class 34 – Cigarette lighters made of non-precious metal.
Incidentally, the same company also owns Trademarks for “Slane Castle” and “Conyngham”
The big issue here is that say you are a local producer in Slane who makes any of the above products and you (for obvious reasons) want to use the word ‘Slane’ in your brand name, like for example ‘Slane Fashion’ or ‘Slane’s Womenswear’ or ‘Slane Darts’ or ‘Slane Leathers’, then you would be using a similar or identical goods for similar goods or services, and that gives rise to the possibility of a breach of trademark. either directly or if there’s a likelihood of confusion.
Without going into it in too much detail, this creates a situation where anybody using the word Slane for any goods identical to or similar to the above, risks being sued. They may not be sued, because a trademark of itself is no use unless the owner enforces its rights under it. So, if you release a brand of Slane Dresses, you might be sued. If you’re sued, and you countersue to have the trademark revoked, you might win. But you’re still being sued….and who (apart from me, for obvious self serving reasons) wants that to happen to you??
I’m sure a lot of people will be asking “But how is this possible?”, and that’s a fair question. There’s an argument it shouldn’t have been granted, and that the European Patents Office made a mistake in granting it. As Colm Keena points out, the application in the US was refused.
The basis for refusal is the US equivalent of section 8(1)(c) of our Irish Act, that Trade Mark Act 1996 (which is itself based on the EU legislation under which the EU IPO makes its decisions)
That section says
The following shall not be registered as trade marks….trademarks which consist exclusively of signs or indications which may serve, in trade, to designate the…..geographical origin….of goods or services
And here you would argue that ‘Slane’ ticks that box. So if the EU IPO had done any research (like the US office did, by, you know, Googling it!) they probably would have found plenty about Slane, and may have refused the trademark on the basis of the EU Equivalent of that section. But they didn’t.
So it’s now a trademark, and so you risk using the word ‘Slane’ in your brand for goods/services identical to or similar to the above goods at your peril.
Incidentally, that ground for refusal also forms that basis of grounds for revoking a trademark, so anybody could apply to have the trademark for ‘Slane’ revoke for some or all of the classes of goods/services on the basis that is should never have been granted (either for the reasons above, or for other of what are called the absolute or relative grounds of refusal. In November of last year (2016) the EUIPO made a decision (copied at the bottom of this post) on the trademark ‘Waterford’, which is the most ‘trademarked’ county in Ireland, where an entity called ‘Unite the Union’ had applied to have the trademark ‘Waterford’ revoke on the grounds it was misleading, because most ‘Waterford’ Crystal products aren’t actually manufactured in Waterford.
In the case of Slane, I would suggest that they may have over-reached with the number of classes and categories of goods/services – If they want to make Slane Castle Whiskey, then Slane Castle would be enough to protect it, if they are making ‘Slane Whiskey’ then they should have limited their application to Whiskey and like products rather than all alcohol and so on. But that’s just a personal opinion, they were obviously entitled to apply for whatever they wanted, and ultimately they got it. A further issue 4 years from now is that any of the goods and services they haven’t used the name for can be revoked for non-use. But that’s still 4 years away.
The issue about trademarking of place names arguably gets more complicated though where a particular region has built up a reputation for something. Keeping ‘Slane’ as an example, what if the registration was for the holding of musical concerts or the provision of entertainment services? All of a sudden, that doesn’t seem as objectionable.
Likewise, what about ‘Charleville’ for cheese?
SO it’s far from open and shut when it comes to place names
Having considered the Slane Tradmark, I decided to see how many of the 32 (don’t start) Irish counties are the subject of simple pure word trademarks in the EU (which applies equally across the whole EU including Ireland). The answer is a quite staggering nearly HALF of them:
There was a trademark, but has since expired
There was an application, but it was withdrawn
There was an application, but it was refused (because there is Spanish word trademark for Donegal, apparently)
There’s actually two separate Kerry trademarks
There’s two Wexford Trademarks, one from Glanbia, and the other from a company in Germany
The trademark for ‘Wicklow’ is owned by Arista Music in New York
So there you have it. I should say there are LOTS more trademarks that include the names of Irish places and counties, but I haven’t included them here, because really it’s holding the sole word on its own as a word mark that is potentially the most problematic for any potential business and brand owners.
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