http://ipkitten.blogspot.com/2023/05/cultural-meme-as-trademark-registration.html
Emeritus Kat, Professor Ilanah Fhima, proposes a provocative approach to signs that have taken on cultural significance.
Rebekah Vardy, wife of football player Jamie Vardy, has managed to secure registration of WAGATHA CHRISTIE for a wide range of goods and services. Why is this noteworthy? Unless you were among those lucky souls who spent the summer of last year on a desert island or extended trip to Mars, you have been aware that Mrs. Vardy was the unsuccessful claimant in last year’s most entertaining libel trial.
There, Coleen Rooney, wife of football player Wayne Rooney, perturbed by the leaking of stories from her private Instagram account, conducted a ‘sting’ whereby she planted fake stories which she ensured were only accessible to Mrs Vardy.
Once these stories appeared in the press, Mrs. Rooney deduced that Mrs. Vardy was the culprit (since she was the only person who had sight of them) and supersleuth Mrs. Rooney posted on Twitter the words “It’s ……….… Rebekah Vardy’s account”, earning her the moniker WAGATHA CHRISTIE (a collocation of the WAG label given to footballers Wives And Girlfriends and famous crime novelist Agatha Christie).
The libel trial ensued. As noted, Mrs. Vardy did not prevail.
Given this, there’s something a little disconcerting about the (perfectly legal) registration of the WAGATHA CHRISTIE mark. After all, wasn’t Coleen Rooney the real Wagatha – not Rebekah? And this highlights the problem: Rebekah Vardy was not Wagatha Christie.
Mrs. Vardy did not even come up with the term (the coiner of the phrase was comedian Dan Atkinson), but he concedes that there is no copyright in the term. Because she could use it for, say, an electric whisk, in order to indicate its trade origin and she got there first, then she is entitled to the mark.
To me, this suggests a dystopian vision of the world (at least from the vantage of trade marks), composed of words, images and even objects, floating about. But, because they are not directly connected to the goods, they are fair game to be monopolised as a trade mark right, at least for the next five years, and even longer provided that no one spots that they are on the register.
This is a similar sort of logic to that which allows an applicant to register the shape of a LANDROVER as an aeroplane on the basis that no one else is making aeroplanes in the shape of a car. Jaguar Land Rover could make a car-shaped aeroplane. It would certainly be different to all the other shapes of aeroplanes (and so the CJEU assumes, distinctive). But as a consumer, the primary message of a car-shaped aeroplane to me is “Warning, this is a car, do not book your next ticket to Ibiza to travel in this vehicle!”
Similarly, Mrs Vardy could, at some point in the future, begin to use WAGATHA CHRISTIE in relation to a whole host of goods and services, but right now that is not the primary meaning of the mark, which instead will be seen by consumers as referring to the libel case.
In both cases, these marks are ‘different’ from what’s already out there, and so seem to satisfy the test for distinctiveness on a cursory level, but it is doubtful whether consumers really will see them as indicative of origin without considerable training.
What can be done? Possibly not that much if we are content with a system based on first to file rather than first to use, and without the need to prove use unless challenged down the line. Bad faith has a role to play in limiting entirely speculative registrations, as we see from the forthcoming Skykick case.
The issue there is the extent to which it can be counted as bad faith (a ground for refusal or invalidation of a trade mark) for a (would be) trade mark owner to file a mark for a range of goods and services broader than that which it would ever offer. Indeed, perhaps mindful of the pending litigation, Mrs Vardy did not include whips in her application.
Another option is to look across the Pond, where failure to function as a trademark is a ground for refusal. Briefly, a mark will not be registered in the US if the mark as filed just won’t indicate origin (even if in another context it might).
Perhaps this captures my real concern here: Wagatha Christie could function as a trade mark in principle, but this misses the context of what seems like an attempt to gain exclusive rights to what has become a cultural meme.
Professor Lisa Ramsey has argued that such pre-existing meanings should, in the interests of free speech, be considered in assessing failure to function as a trade mark which indicates origin. I would argue that, likewise, we could do a better job of looking at context when assessing trade mark registrations – not in terms of proving use, but rather in terms of the pre-existing semantics of the mark at the point of registration.
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