Before the BBC took over the sponsorship of the promenade concerts in 1927, a Dr George Cathcart had that responsibility, which he had discharged since the summer concerts began in 1895
Topic: Trade marks
Who: The BBC and Christopher Palmer-Jeffery
When: May 2000
Where: UK Trade Marks Registry
What happened:
Before the BBC took over the sponsorship of the promenade concerts in 1927, a Dr George Cathcart had that responsibility, which he had discharged since the summer concerts began in 1895. In 1996, after discussions with descendants of Dr Cathcart, a Christopher Palmer-Jeffery ("CPJ") launched the "Cathcart Spring Proms." These were primarily aimed at corporate customers and some concerts were staged at the Albert Hall. Then, perhaps amazed to find that the BBC had failed in 70 years to register the "Proms" or "Henry Wood Proms" as a trade mark, CPJ applied to register "Cathcart Proms." Not surprisingly, the BBC opposed. They said use of the Cathcart Proms was a passing off as the proms mark had become synonymous with the BBC and its annual summer concerts. For similar reasons for CPJ to have the registration would be innately deceptive.
The Registry disagreed with the BBC. References to the dictionary suggested "prom" signified promenade concerts where the audience was not necessarily all seated. There was no evidence of confusion between the Cathcart and BBC Proms before the examiner, and in the BBC’s promotional material the "BBC" references were given ever greater prominence than "the proms," with "BBC Proms" hardly appearing at all. So "Cathcart Proms" was allowed to proceed to registration, closely followed, one imagines, by BBC applications to register "BBC Proms" and maybe "Henry Wood Proms," as well as an appeal against this decision.
Why this matters:
Often it is too late by the time a business realises it has been sitting on a highly valuable piece of branding for so long that it has failed to appreciate that value and take any steps to protect it. If the domain name scramble and the cybersquatter scourge has failed to shake brand owners out of their slumbers, perhaps cases like this will!
