Sort out your trade marks and relax!

The band “Frankie Goes to Hollywood” may have been able to relax if they had sorted out their trade mark rights at the very start of their career.

“If only they had come to a trade mark attorney at the outset, they could have established their rights to the name “Frankie Goes to Hollywood” and avoided costly disputes”, said Philip Harris, President of the Institute of Trade Mark Attorneys (ITMA).

Mr. Harris’s comments came after Holly Johnson’s application to register the name “Frankie Goes to Hollywood” was successfully opposed by the other four former band members, Peter Gill, Mark O’Toole, Paul Rutherford and Brian Nash.

In a ruling at the UK Intellectual Property Office (formerly known as the Patent Office), the Hearing Officer concluded that the opponents had residual goodwill attributable to the original band and that Mr. Johnson had sought to register the trade mark in bad faith.

Mr. Harris said: “The protection of brand names is a difficult area, particularly where the origination or continued use of the name might involve changing band members and different managers.

“In recent times bands have realized that they need to establish their intellectual Property rights, including trade marks, at an early stage. New bands should consider registering their names as trade marks as early as possible, not only to ensure that the ownership of the name is clearly understood, but also because, in a rather strange twist, under current law the more famous the name of the band the more difficult it can be to register the name for merchandising products, - as LINKIN PARK found when they were deemed, ironically, too well-known to register their band name as a trade mark for posters.”

“Back in the early 80s, when “Relax” became a huge hit for Frankie Goes to Hollywood, few bands were aware of, or cared about, intellectual property. Nowadays, bands and their advisers are much more aware about establishing their rights. They can be assured that ITMA members are fully qualified professionals in the field and will understand the unique problems surrounding the protection of band names.”

“Anyone needing a trade mark attorney can visit www.itma.org.uk or telephone us on 020 8686 2052 for a list of members throughout the UK.”

NOTES FOR EDITORS

1. The Institute of Trade Mark Attorneys (ITMA) was established in 1934 as the professional body representing those persons qualified to act for the owners of trade mark and allied intellectual property rights (in particular, registered designs) both nationally and internationally. It now represents the vast majority of UK registered trade mark agents and all UK Trade Mark & Design Litigators.

2. Currently ITMA has approximately 500 practising members; it also extends associate membership to professionals in related fields of law and overseas membership to foreign trade mark attorneys. Its total membership (all classes) is about 1600 members, primarily located in the United Kingdom and Europe, but also in more than 50 other countries.

3. ITMA is regularly consulted by UK government and by international bodies when questions affecting trade mark and allied intellectual property rights arise. It has regular meetings with the UK Intellectual Property Office, the Community Trade Marks Office (OHIM), the World Intellectual Property Organisation (WIPO) and other sister organisations in Europe and beyond. For more information visit www.itma.org.uk.

Press Enquiries to Ken Storey, PR Manager, Tel: 020 8941 6079 or Mobile 07710 434 507.