Mark your Word - Discussion about European Trademark Laws (I)

I thought I would take some time to sit down with Sandy from our Legal department and try to get a crash course on basic European and German law – specifically word marks and trademarks. I had no idea what I was getting myself into. We’ve seen and experienced over the last few years how some quite unbelievable word marks have been registered for the “Nice Classification 25” (textiles) protecting them from being printed on any article of clothing. We thought it would be useful for you to see our perspective on trademarks, brands and word marks and all of the curious legal developments we “discover” every day.

We don’t know every single word mark, and some aren’t even worth mentioning. (A good place to start searching for them is here or here.) We do notice however that word marks lead to discussions and general confusion, especially when we find one on a product and have to deactivate it. We aren’t doing this just for fun nor are we doing it to annoy you.

It is completely incomprehensible for us why some everyday words, names or even numbers are protected. On the other hand there are some trademarks which are “only” everyday words whose protection doesn’t surprise us, like “Hoover”, “Coke” or “Frisbee”. These are established brands which have made it into everyday speech, but it is generally understood and accepted that they can’t be printed on a shirt.

We have to be extremely careful and very strict (sorry) with registered trademarks, especially word marks. Generally the so-called procedural law applies here. In layman’s terms, the person who registered the brand owns the rights to it. Without permission from the holder of the trademark’s rights, a third party is not allowed to use it. A registered trademark which isn’t well-known has the exact same rights to protection and has to be handled just like a “valuable” trademark. For example, “Coca Cola” is ranked as one of the most valuable trademarks by Best Global Brands, and the less-known brand “Poodle” would get the same protection.

There has been some recent confusion that “hip hop”, “rock”, “star”, “hooligan”, “poker” or even “666” have been registered as word marks – even we were surprised – a number as a word mark, huh!? Even these trademarks cannot be used by a third party (i.e. Spreadshirt or a Shop Partner) without permission from the proprietor of the trademark. With word marks it doesn’t matter if the font or text size are changed: the word – or the number – is protected in any form. This is also the case if there are other elements placed around it. As long as the word is predominantly displayed or one might associate with the brand, you have to be careful. Take the example pictured above where the protected combination (666) is part of a graphic element and for that reason rather(!) unproblematic.

We often get e-mails upon rejection or deactivation, and I quote:

It just can’t be true that normal, everyday words are protected by one person and that no one else is allowed to use them.

We don’t understand that either. Unfortunately we can’t do anything about it. Again, every trademark and proprietor of the trademark has the same right to its protection.

But that is a type of music. You can’t put a trademark on a genre. That would mean that all of the clubs wouldn’t be able to use them.

We can’t speak for others. It is possible that clubs or other businesses have received a license from the proprietor and are allowed to use the trademarked word. Our first responsibility is to accept the fact that the word is protected under trademark and comply with the laws.

Can I get permission to use the word?

Most certainly. We have had good experience with proprietors who offer a limited license for their trademark if you contact them and explain how you would like to use “their” word or design. We can then activate protected designs or texts for these specific cases.

Again, these explanations of word marks and trademarks refer only to designs and products for our UK and European platforms. Hope that helped clear things up a bit - we’ll be back for more soon! In the meanwhile, check out our FAQ on designs and copyright/trademark.