Can a public domain work be protected by trademark reg?

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Jacqui
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Can a public domain work be protected by trademark reg?

Post by Jacqui » Wed Jul 30, 2014 11:33 am

I have noticed that a well known literary work that recently went into the public domain had a trademark registered recently against various characters names covering many different classes of uses. Has anyone else come across this and does anyone have any thoughts on how this might impinge on the work being freely accessible and enjoyed in the public domain?

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AndyJ
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Post by AndyJ » Wed Jul 30, 2014 12:50 pm

Hi Jacqui,
This sort of thing does go on, but since trade mark and copyright protect different aspects, it's not always as successful as the 'entrepreneurs' expect.
A good example (maybe the one you were thinking of) is that of Sherlock Holmes. Because Arthur Conan Doyle died in 1930 his works are now out of copyright (except in the special case in the USA where 10 of his short stories were published after 1923 and are still protected in the US by their hybrid copyright law which applied at that time). But there are a number of registered trade marks in the names of characters from the Sherlock Holmes stories, including Sherlock himself, Dr Watson, Professor Moriarty and 221B Baker Street etc.
However no amount of trade mark protection would prevent the Sherlock Holmes books and short stories themselves from being re-published by anyone who wished to do so.
I think the most likely aim of these registrations is to try to profit from spin-off uses of the names of the characters. However as, in many cases, the companies which have registered the names are non-practising entities (NPE), ie they are not actually producing any goods in the classes in which they have registered the marks, the validity of their registrations is open to challenge on several grounds including non-use and bad faith*. In other cases where the registration is there to protect a legitimate product or service (for example this use of Dr Watson), then infringement will only be found where someone else tries to trade in a similar product or service using the same name, thus leading to real confusion in the minds of consumers. This would not apply, for instance if someone wrote a new Sherlock Holmes story, say Sherlock Holmes and Dr Watson go boating, even though both names are registered in class 16 which includes printed matter and books, because firstly the buying public would be more likely associate the book with Arthur Conan Doyle, and secondly because it is highly unlikely that the registered owner is actually trading in any goods in class 16 with which the new book could be confused. It is also arguable that using the names in the title of a book is actually descriptive and therefore tthey are not being used as a trade mark, however that would need to be argued in court.
I suspect that the business model of any NPEs involves extracting fees for licences from unsuspecting firms who fail to challenge such practices.

*bad faith is only an absolute ground for refusing or opposing the regsitration of a mark in the UK; for Community (EU) trade marks, it is a relative ground for opposition. This may account for why several of the marks referred to above are community trade marks, not UK ones.
Advice or comment provided here is not and does not purport to be legal advice as defined by s.12 of Legal Services Act 2007

Jacqui
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Post by Jacqui » Wed Jul 30, 2014 1:45 pm

Thank you Andy. Your answer is really helpful. The literary work isn't Sherlock Holmes but is very well known. We are hoping to produce an audiobook now that it is public domain but being cautious we always check the IPO first. The entity that registered the trademarks is the agent that has always carefully managed the rights on behalf of the publisher/ estate and unsurprisingly you are right in guessing that they have registered European trademarks. The character names feature in the book titles and throughout the work so I was concerned that this was a clever way of extending control of the rights albeit through the channel of trademark protection rather than copyright.
Many thanks,
Jacqui

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