The Board of the company running Cornwall’s Eden Project were surprised to discover who had applied to register “The Eden Project” as a trade mark.
Who: The Eden Proj Who: The Eden Project and Others/Kabushiki Kaisha and Dalgetty
Where: Chancery Division of the High Court, London
When: Reported April 2001
Two recently reported cases focused on the issue of who can be said to legitimately apply to register a trade mark. The Eden Project case dealt with the application to register that phrase as a trade mark by a director of the company responsible for the remarkable Cornwall visitor attraction. At the time he was unhappy about his treatment by his colleagues on the Board. The application was in the director’s name and not discovered by his company until his removal as a director. The Court held the director in breach of fiduciary duty. The intention was to benefit him personally, not the company, when his fiduciary duty as a director dictated otherwise. Allowing the company to build up goodwill in the brand so that the director could extract an ever greater price for its ultimate transfer to the company cut across his clear obligations.
In the Dalgetty case Kabuishiki Kaisha ("KK") applied to register Nonogram as a UK trade mark in September 1995. From other surrounding circumstances it was clear KK intended to use the mark in conjunction with a computer version of an existing game. The trouble was, the game and the name Nonogram had been devised by other parties who knew nothing of KK’s application to register the brand. KK was negotiating with these parties at the time but these discussions never came to fruition. The Registrar held the KK application was filed in bad faith. Despite their later assignment of the application to one of the original devisers of the brand and the game, this could not cure the fundamental flaw in the application, which could not be registered in anybody’s name.
Why this matters:
Those devising brand names and/or applying to register them often do so without the knowledge or approval of the manufacturer. These cases highlight the dangers of this course of action, and the ultimate price that can be paid in the form of registration being refused. The identity of the trade mark owner, along with the specification of products the registration is sought for, are perhaps the two most crucial parts of the trade mark application form TM1. They should not be taken lightly.