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Last Updated: Tuesday, 9 May 2006, 12:34 GMT 13:34 UK
Trade mark turf wars
By Peter Groves

Polos
Hard to confuse: Polo mints, Polo shirts and Polo cars
Brands which shared the same names used to rub along happily enough together, but, as the Apple v Apple case shows, technology is pushing companies into trade mark turf wars.

Forty years ago, John Lennon infamously told a journalist from the Evening Standard that The Beatles were "more popular than Jesus" (not, as history has recorded, "bigger than").

Many Christians in America were outraged, albums were burned, merchandise was boycotted and on 26 August they played their last concert.

At the High Court in London this month, The Beatles - and in particular their company, Apple Corps Ltd - were once again excoriated by American fundamentalists.

This time, however, it was evangelists for a particular brand of personal computer who were affronted. For the past 28 or so years, The Beatles' Apple Corps and Apple Computer (let's call them Corps and Computer) have engaged in a desultory struggle over the use of the Apple name and their respective logos.

No one buying a packet of Polo mints asks themselves whether Volkswagen or Ralph Lauren has entered the confectionery market
The High Court's ruling on Monday, that the American upstart could continue to use its apple logo on its iTunes store, is not the end of the matter. Sir Paul McCartney, Ringo Starr and the families of George Harrison and John Lennon have said they will appeal.

The facts of the dispute have been well rehearsed - long ago the two Apples struck a deal under which Computer would stay out of the music industry. This therefore was no ordinary trade mark dispute - it came down to breach of contract.

There is nothing unusual about co-existence agreements between trade mark owners. The world is full of similar, even identical, trade marks, and there is plenty of room for them so long as all concerned know where the lines are drawn, and observe them.

No one buying a packet of Polo mints asks themselves whether Volkswagen or Ralph Lauren has entered the confectionery market. But in other cases there could be scope for confusion, and consent from the senior trade mark owner might be needed to convince the Trade Marks Registry to allow the junior mark to be registered.

Disputes really stepped up a gear with the advent of the internet. The use of domain names has led to turf wars between the owners of trade marks that previously had happily co-existed.

WWFs
Wrestling or wildlife... it's not always easy to distinguish
There has been litigation involving arrangements between Pitman Publishing and Pitman Training, and it reignited a long-running standoff between the Worldwide Fund for Nature (WWF) and the World Wrestling Federation (WWF).

In the Pitman case, the problem came down to who might be entitled to the domain name, "pitman.co.uk". When the businesses had passed into different ownership years ago an agreement had been written to govern the use in their respective fields of the name.

Had the authors of the Pitman agreement in 1985 foreseen the development of the internet and the domain name system, they might have legislated for it: but of course they could not, and so they did not.

The Apple case shows how technological change can make a nonsense out of the most carefully drafted agreement.

Dispute history

Ten years after Lennon's interview was published, on 1 April 1976, Steve Jobs, Steve Wozniak and Ronald Wayne founded a company to sell their Apple 1 personal computer kit. History records that Jobs thought it was a neat idea to name the product, and the company, after his favourite band's record label. He may have wished he'd taken an easier route.

  • In 1978, his favourite band sued his company and three years later Computer settled with Corps, paying $80,000 and promising not to go into the music business. Back then, the technologies were different and this was not a big ask of a computer company.

  • By 1987, Computer was trying to renegotiate the agreement, which in the meantime had been given a "comfort letter" permission by the European Commission.

  • Negotiations continued, but Corps contended that Computer was already in breach of the agreement by adding sound capability to its computers.

  • In 1989, negotiations broke down and skirmishes ensued, including several attempts by Computer to void the agreement.

  • The parties settled their differences again in 1991, on terms reportedly including a payment of $26.5m, and happily went about their respective businesses on the basis of a new agreement until the iPod and iTunes came along.

  • Then, in 2004, Corps alleged that the agreement had been breached by Computer's iTunes Music Store. Computer argued it was nothing more than a mechanism for transmitting data, and that the agreement only prohibited it from selling records, tapes and CDs, although significantly the agreement mentioned "any... future creative works [involving] music and/or musical performances".

Douglas Adams
His loyalties would have been torn
The judge had the unenviable task of working out what the agreement actually meant, and given that the music world has converged with the computer world to an extent that could not have been foreseen in 1981, or indeed in 1991, it would not have been an easy task to discern the parties' intentions.

One thing is for certain. The court will not have heard any Beatles music played on one of the defendant's iconic devices. Corps has resolutely set its face against participating in the downloading revolution.

With The Beatles' back-catalogue not yet available (legally) on the web, and an avid fan in charge of the most successful on-line music store, there is plenty of money waiting to be made by both sides. Monday's judgement, however, leaves little hope of this being resolved.

One of the Apple Macintosh's most enthusiastic fans, who famously never saw The Beatles live, had three of the group's songs, and John Lennon's Imagine, played at his funeral in 2001.

I wonder what Douglas Adams would have had to say about all this? Something much more amusing than I can manage, for certain.

Peter Groves is Head of Bircham Dyson Bell's Intellectual Property Group.


Add your comments on this story, using the form below.

Douglas Adams might have said " so long and thanks for all the flash"
james, alicante

How does Triumph (motorcycles), Triumph (bras) and Triumph (filing cabinets) get on?
Ian Wells, Gt Yarmouth

Does anyone really think there is any confusion between a cutting edge computer company and a dead for 30 years record company. The ex-Beatles seem to devote a lot of energy to getting more money via courts considering how much they already have.
bob, cheltenham

One thing is not for certain! Just because you can't download the Beatles' music over the internet doesn't mean you can't put it on an iPod. Given that the Beatles haven't been particularly prolific over the last few years, I suspect that most Beatles fans, iPod owners or not, already have their material on CD, and could, if they so desire, transfer it to their iPods.
ian,

How on earth can you confuse the Apple computers logo and the Apple Corps logo? they are not the same. The Apple Corps logo is of a green apple, while the Apple Computer logo is a silohette of an apple, in one single colour with a single coloured back ground with a bit taken out of the apple. If you try looking at them side by side you really wont be fooled - Big green whole apple, signle coloured apple with bit missing - Oh i'm so confused, Not.
Robert Kilpin, Northamptonshire, UK

You omit to mention that the World Wrestling Federation changed its name to WWE to avoid further problems with the original WWF. Perhaps Corps or Computer should follow suit?
John Airey, Peterborough, UK

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