AF7430 Chap.4 Trade Marks, Passing Off and the Right of Publicity
Trade Marks, Passing Off and the Right of Publicity
Four rights that do not behave like copyright
Everything in the previous chapter arose automatically and protected an expression. Nothing here does both. A patent and a trade mark have to be applied for and examined or registered. Passing off is filed nowhere and grows only out of actual trading.
The right of publicity is primarily an overseas concept with no direct local equivalent, which is why a local claimant has to reach for passing off instead. Getting the four straight is worth more than knowing any one of them in depth, because problem questions are built out of the gaps between them.
Why a screen business cares about patents
The course makes the connection in one line: no patent, no Hollywood.
The industry runs on equipment, and the people who invent that equipment are frequently not scientists but cameramen, technicians and producers working on real productions. Digital acquisition changed what post-production could do, stabilised camera mounts made whole films of continuous movement possible, and facial animation models put the non-human characters of the last three decades on screen.
A patent lasts twenty years from the filing date and is territorial, and the practical advice that follows is a contract point rather than a patent point: have an agreement under which crew assign their rights in an invention to the production company.
What a sign has to do to be registrable
A trade mark is any sign capable of distinguishing one undertaking's goods or services from another's and capable of being represented graphically.
The list of what may constitute one is much wider than people assume, covering words and personal names, designs, letters and numerals, figurative elements, colours, sounds and smells, the shape of the goods or of their packaging, and any mixture of those. Registration is not essential but is always recommended, and it proceeds class by class across forty-five classes, the first thirty-four being goods.
Absolute grounds attack the sign itself and three of them, lack of distinctive character, descriptiveness and customary signs, fall away if distinctive character was in fact acquired through use before the application date; morality, deceptiveness, bad faith and national emblems do not.
Relative grounds compare the sign with an earlier mark and can be displaced by honest concurrent use.
Territoriality, and what the comparative disputes show
Protection runs only where the mark is registered, which is why the cross-border disputes the course teaches all turn on who filed first in which registry and what local recognition existed at that date rather than on who is more famous.
One luxury house lost a mainland objection because its evidence showed fame arriving after the local registration and concerned reputation elsewhere. One footwear brand eventually won years later, with a finding of unfair competition alongside infringement.
A basketball player's case split on final appeal, giving him rights in the Chinese characters by which the local public knew him and none in the romanised transliteration.
Marks on screen, and the remedy for people who registered nothing
Real marks shape characters and lend authenticity to invented worlds, and placement turns that into production funding rather than an aesthetic compromise.
Running the other way, a production's own marks are often where the money is, since the largest profit frequently comes from merchandise and ancillary products rather than from the box office.
Where nothing was registered, passing off requires three things in order: goodwill recognised by the public as specifically distinctive, a misrepresentation that need not be intentional leading the public to believe the goods are the claimant's, and damage, satisfied by a real business possibility of loss rather than a mere fear of it.
The doctrine has been extended to parties in different businesses, to a person's image, and to businesses only weeks old.
What this chapter covers
- 01
Patent basics, and the contract point that follows for a producer
- 02
What counts as a sign, and the forty-five classes
- 03
Absolute grounds, and which three can be answered by acquired distinctiveness
- 04
Relative grounds and honest concurrent use
- 05
Territoriality read through three cross-border disputes
- 06
Product placement as production finance
- 07
Merchandising, and why the box office is not always the money
- 08
The three elements of passing off, taken in order
- 09
The right of publicity, and the local claim that had to be framed differently
A fictional brand, a real imitator, nothing on the register
- 3Explain what she must show on goodwill, and what evidence proves it.
- 3Explain the misrepresentation element and what is not required.
- 4Explain the damage element and the two extensions that help her.
Key terms
- Inventive Step
- One of the three patentability requirements, satisfied where, measured against what is already known, the invention would not be obvious to somebody skilled in the relevant field.
- Graphic Representation
- The requirement that a sign be capable of being represented in writing or drawing, which is often the real obstacle for sounds, smells and shapes.
- Absolute Grounds
- Objections directed at the sign itself, including lack of distinctive character, descriptiveness, customary signs, immorality, deceptiveness, bad faith and national emblems.
- Acquired Distinctiveness
- Distinctive character gained through use before the application date, which answers the descriptiveness and non-distinctiveness objections but not the others.
- Relative Grounds
- Objections comparing a sign with an earlier mark, engaged by identity or similarity of sign and of goods or services where confusion is likely.
- Honest Concurrent Use
- A basis on which relative grounds do not apply, where both marks have been used honestly alongside one another or other special circumstances make registration proper.
- Goodwill
- The attractive force of a name or get-up that brings customers to its source. It is the first element of passing off and must be recognised by the public as specifically distinctive.
- Right Of Publicity
- A chiefly overseas right preventing unauthorised commercial use of a person's name, voice, signature, photograph or likeness, and allowing that person to control and profit from it.
Trade Marks, Passing Off and the Right of Publicity FAQ
Does a film title need to be registered as a trade mark?
Not for the film itself, but usually for everything around it. A title used only as a title is not obviously a badge of trade origin for any goods, while the same title on a toy, a shirt or a game plainly is.
Because registration proceeds class by class across forty-five classes, the decision follows the merchandising plan rather than the production, which means somebody who knows what the ancillary business will be has to take it early rather than leaving it to whoever clears the title.
Why do famous brands lose trade mark disputes in other jurisdictions?
Because protection is territorial and turns on the register rather than on fame. A mark is protected only where it is registered, so a company whose reputation was built elsewhere has to prove local recognition at the date the other party filed.
One reported objection failed precisely because the evidence showed fame arriving after the local registration and concerned a different market, and there was nothing to show the later mark had been filed as a means of passing off.
How can a performer stop their face being used commercially here?
Not through a right of publicity, which is primarily an overseas concept. The local route is passing off, which requires goodwill in the person's own image, a misrepresentation that they have endorsed the product, and damage to their endorsement business.
A reported local attempt shows the obstacle as well as the route: a leading actor who objected to his image on a bank's credit cards was met with the argument that the broadcaster owned the copyright in the photographs, so he lacked the capacity to sue.
Assessment move
Pick five signs you encounter in one day, at least one of which is not a word, and for each one write down what it would have to be registered for, which absolute ground an examiner might raise, and whether the owner could fall back on passing off if the registration failed.
Five minutes of that is worth more than rereading the grounds, because the grounds only make sense once you have tried to apply them to something specific.
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