Theatre shows have been making headlines again in the field of UK trademark enforcement. Luke Portnow considers the threshold for bad faith.
We recently reported on the successful action by the creators of British TV show Only Falls and Horses. Here, the UK Intellectual Property Enterprise Court held, for the first time, that a fictional character can be an independent copyright work.
From the gritty streets of 1980s Peckham of that TV show, we are now quickly transported to the tabloid glitz and glamour of ‘WAGS’, a term which refers to the wives and girlfriends of English football players.
Followers of ‘WAG’ celebrity news were last year hooked on a libel dispute between Rebekah Vardy and Coleen Rooney. Rooney was successful in her suit, accusing Vardy of leaking posts from her private Instagram account, to the British newspaper The Sun.
The ‘WAG’ and IP worlds then collided very recently in relation to a London West End show which dramatises the story of the libel court case drama. Following its launch, it was announced by Vardy that she had successfully registered WAGATHA CHRISTIE as a UK trademark, held in the name of a media company owned by a friend. The theatre production is called Vardy v Rooney: The Wagatha Christie Trial and the producers were then reportedly considering a change of name in light of this.
For those unfamiliar with the world of ‘WAG’ celebrity, WAGATHA CHRISTIE was used daily in news reports on the libel case, and it is a clever mark, combining the ‘WAG’ term with the famous author. However, the phrase itself was allegedly coined not by Vardy but a comedian in a Tweet dating back to October 2019. The term is too short for copyright protection and so Vardy has the monopoly.
Having lost the libel suit, Vardy has (for now) control over the term used to report on the courtroom antics she was part of, with the registration covering a vast array of goods and services, but importantly here, ‘publishing of scripts for theatrical use’.
Trademark in bad faith?
In a recent twist, the theatre production now says they have no plans to change the name, and many IP practitioners are considering whether the registration is vulnerable to bad faith or common law (unregistered rights) ‘passing off’ provisions.
Bad faith has an extremely high threshold in the UK under the Trade Marks Act 1994: a dishonest intention of undermining the interests of third parties or an intention to obtain exclusive rights for purposes falling outside the functions of the trademark. The registration appears ripe to attack at least based on that, or even that there was no intention to use for some of the goods/services, not just by the named applicant but also in relation to the specification which ranges from those theatre scripts to garden sheers.
For now, the problem remains that the theatre production will still use and reference WAGATHA CHRISTIE in its script, with the registration still sitting on the Register. Just like the witness stand in the libel case, this may be another part of the saga where we sit back and watch, awaiting to see who blinks first.
This all serves as a sobering reminder of the need to apply to register as soon as possible, but also how the common law tort of ‘passing off’ can be used to invalidate a trademark registration in the UK, based on earlier use so long as it generated some goodwill.
But of course, should Vardy successfully defend any attack on her registration, while she may have lost the libel case, she may be laughing all the way to the bank with such a monopoly right.
Luke Portnow is a Trademark Attorney at Novagraaf in the UK