The successful registration of the word mark “WAGATHA CHRISTIE” in the UK (UK00003895558) attracted significant press attention back in April 2023.
At the time, trademark specialists were surprised by the broad specification applied for. The application covered a wide range of goods and services ranging from cosmetics through to broadcasting services. The broad specification also indicated how Rebekah Vardy intended to use the mark, or even perhaps the types of licensing agreements that she intended to enter into with third parties.
Given the broad nature of the mark, it was inevitable to question whether Rebecca Vardy intended to use the mark within the next five years in respect to all the goods and services covered. If the mark was not used, those respective goods and services would become vulnerable to revocation proceedings on the basis of non-use. Secondly, given that Rebekah Vardy was ultimately unsuccessful in the high-profile libel litigation, it was also perplexing that she would take positive steps to keep this litigation in the spotlight by indicating an intention to use the trademark “WAGATHA CHRISTIE”.
It is well known that trademarks offer a monopoly right. They can be relied upon to prevent third parties from using identical or similar marks in relation to identical or similar goods and services for which the mark is registered. No doubt, against this legal backdrop, Disney+ would have been presented with a challenge upon selecting a title for its tell-all documentary covering the High Court libel battle launched by Rebecca Vardy against Coleen Rooney, where Coleen Rooney was widely referred to as “WAGATHA CHRISTIE” by the press in this celebrity spat. What title could Disney+ adopt in view of the UK trademark registration for “WAGATHA CHRISTIE” covering class 38 services, and in particular, broadcasting?
Lucy Marlow, a Senior Associate and Intellectual Property expert at JMW Solicitors LLP said:
“Use of an identical mark in respect of identical services gives rise to a potential claim of UK trademark infringement. Disney’s legal team would therefore wish to avoid using the mark “WAGATHA CHRISTIE” in the title of its documentary. However, as the term “WAGATHA CHRISTIE” is well known amongst the public as referring to the high-profile libel claim, it is understandable that Disney+ would nevertheless wish to include this term, or perhaps something similar. Disney would be keen to ensure that viewers could readily understand the nature of the documentary itself from its title. Disney+ lawyers would have therefore looked for ways to reconcile these opposing factors when arriving at its chosen documentary title”.
It has since been revealed that the program will be called “Coleen Rooney: The Real Wagatha Story”. Lucy added:
“In this instance, Disney+ has adopted the title “Coleen Rooney: The Real Wagatha Story”. This title amounts to use of a similar mark as the title incorporates the word “Wagatha”. Disney has reduced the degree of similarity and therefore infringement risk by using the various additional descriptive words. Taken in its entirety, the descriptive nature of this title also reduces the likelihood of confusion as to the origin of the documentary, which is a necessary element of a claim that a party must establish when the marks in question are not identical.
Disney+ may have been mindful of section 11 (2) (b) of the Trade Marks Act 1994 when arriving at its chosen title. Section 11 (2) (b) provides that a registered trademark is not infringed where use of the trademark is necessary to indicate the kind of service supplied under the mark, so long as the use is in accordance with honest practices in industrial or commercial matters. However, it is questionable whether it is necessary for Disney+ to use the word “WAGATHA” to indicate the intended nature of its documentary.”
As trademark protection exists on a territory by territory basis, and the mark “Wagatha Christie” does not appear to be registered in territories outside the UK, it would be interesting to see whether Disney+ will adopt a title incorporating “Wagatha Christie” in territories outside the UK, where the trademark infringement risk is likely to be considerably lower. Lucy concluded:
“Considerable thought would need to be given to the strategy around this as if Disney+ were considered to be “targeting” consumers in the UK, it could still fall within the grasp of a UK trademark infringement claim. Given the ubiquitous nature of online streaming services, it is clear to see that the laws concerning “targeting” and trademark infringement are complex.”
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