A dose of reality
Lizzie Sergeant summarises the circumstances that saw a celebrity lose out. O/345/19, FERNE BEAUTY (Invalidity), UK IPO, 19th June 2019.
O/345/19, FERNE BEAUTY (Invalidity), UK IPO, 19th June 2019
Ms Ferne McCann (the Applicant) applied to invalidate UK trade mark registration No 3160229 FERNE and FERNE BEAUTY, registered as a series in the name of CP Management London Ltd (the Proprietor). The application for registration was filed on 19th April 2016 (the relevant date). The trade marks are registered in relation to class 3 goods including cosmetics and tanning products as well as related retail services in class 35 and beauty care services in class 44.
The Applicant applied to have the registration declared invalid under s47(1) and/or (2) of the Trade Marks Act 1994 on the basis that the registration was contrary to ss3(6), 5(4)(a) and 60(3).
In particular, the Applicant claimed that FERNE and FERNE MCCANN were, at the relevant date, distinctive of her goodwill, and use of the trade marks without her consent constitutes a misrepresentation to the public and takes unfair advantage of her goodwill. In addition, the Applicant claimed that she and the Proprietor were party to an Endorsement Agreement (EA) at the relevant date, which gave the proprietor a licence to use her name to promote self-tanning products during the term of the EA but did not provide for the Proprietor to register the marks. The EA was terminated in February 2017.
In support of her acquired goodwill in FERNE, the Applicant submitted that she is a very well-known celebrity having starred in reality TV series The Only Way is Essex (TOWIE) and I’m a Celebrity... Get Me Out of Here! The Applicant also featured in celebrity magazines and had a column entitled “The Only Way is Ferne”.
The Proprietor conceded that, as a celebrity, the Applicant did have protectable goodwill at the relevant date. However, they argued that all media references to the Applicant as FERNE contained additional identifiers, such as her surname, photo or reference to TOWIE, and that FERNE alone was not distinctive of her goodwill. The Hearing Office (HO) accepted this, noting that it is clear that the Applicant is known as Ferne McCann.
Turning to the EA, the HO considered whether use of FERNE as a brand constituted, by itself, an “endorsement” (as defined in the EA) of the Proprietor’s products. If it did, according to the EA, the Proprietor could not use FERNE after the EA was terminated.
However, as it had been determined that FERNE alone was not distinctive of the Applicant at the relevant date, FERNE alone did not fall within the definition of “endorsements”. The EA therefore provided that the Proprietor was the owner of the FERNE trade mark and the goodwill generated under it. The application for invalidation under s5(4)(a) failed.
The HO noted that there was no evidence that the Proprietor’s application was an attempt to stop the Applicant from using FERNE. Therefore, the application for invalidation under s3(6) failed.
The final ground for invalidation, under s60(3), was rejected as the HO concluded this claim was not sufficiently pleaded.
- It is not sufficient to rely on protectable goodwill in a given mark where that mark is not distinctive of that goodwill
- This case highlights the difficulty in establishing protectable goodwill in a Christian name alone. The public needs to be educated so as not to rely on other identifying features, such as an image or surname
Lizzie Sergeant is a Trainee Trade Mark Attorney at Walker Morris LLP
CMS Cameron McKenna Nabarro Olswang LLP