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Keep Calm and Carry On by Stephen Welfare, IP Partner
It seems that the war time exhortation to the nation to remain calm has, 70 years later, caused panic! Shops and internet sites are awash with posters and gift items bearing the British Government iconic poster (or similar), however a dispute rages over who has legal ownership.
A Surrey businessman has succeeded in obtaining a community trade mark and, it was reported in the Telegraph, sought to close down other businesses trying to sell goods carrying the slogan. Royds were consulted by one of its giftware clients on this issue back in June of last year.
The European trade mark owned by Keep Calm and Carry On Limited (the company owned by the said Surrey businessman) was registered on 25th March 2011. The company enjoys trade mark monopoly rights over the use of the words “Keep Calm and Carry On” if used as a trade mark in relation to any of the following classes of goods: metals and metal objects, precious metals, jewellery, paper goods, stationary, leather goods, luggage and so forth, furnishings and household goods or house wares, textiles and clothing. It is an extremely wide coverage. How can he have managed this if the original poster was designed by or commissioned by the Government back in 1939?
The answer surely is because no one else had bothered to apply for the registration, so it was available and it would seem that no one opposed the application when it was published by the European Trade Mark Office.
The original design would have been owned by the British Government. The design would have been covered by Crown Copyright, which would have expired after 50 years. The original poster featured a drawing of the Crown of the then monarch George VI. There are countless trade mark registrations for Crowns so the possibility is that the original drawing is protected as a trade mark logo, even though the copyright in the artwork has expired. The slogan however was not registered at least not with the European Trade Mark Office. Prior to 25th March 2011 anyone could have sold goods with the words “Keep Calm and Carry On”.
The European Trade Mark is, according to the Telegraph, under attack. A legal challenge is being made to its registration, with an action for a declaration of invalidity.
A trade mark may be declared invalid after a finding that the original application should not have been allowed either because the Mark does not satisfy the criteria for registration or because there is an earlier Trade Mark or right conflicting with it. The claimant will need to prove that the widespread use of the slogan had rendered it incapable of distinguishing the owner’s goods from those of others – the essential function of a trade mark. It may also be argued that the use of the slogan by other businesses pre-dated that of the registered owner so that earlier use gave rise to an unregistered trade mark protectable in the UK under the law of passing off.
It is to be hoped that the action for revocation of the community trade mark succeeds, in the interests of fairness and honest competition. The registration of Keep Calm and Carry On as a community trade mark may have been a shrewd act, but are there grounds for invalidity under the bad faith provisions of Article 51 of the Council Regulation? “Not the Blitz spirit old man”.