In 2019, Coleen Rooney publicly accused Rebekah Vardy of leaking posts from her private social media account to the British newspaper, ‘The Sun’. Vardy responded with a lawsuit against Rooney, suing her for libel in a case that would be colloquially labelled as ‘Wagatha Christie’. Due to their relationships with famous British footballers, the name has been derived from the acronym used to refer to wives and girlfriends of high-profile sportsmen and women. In 2022, Vardy’s claims were dismissed by the court due to Rooney’s statements being regarded as substantially true. The court ordered Vardy to pay a proportion of Rooney’s legal fees which, on top of her own, were believed to accumulate to around £3 million.
Earlier this year, following the trial, a company who have links to Vardy named ‘London Entertainment Inc Ltd’ successfully registered Wagatha Christie as a trade mark. This trade mark was registered under a total of 20 classes relating to various goods and services, including retail services relating to clothing, alcoholic energy drinks, and sanitisers for household use.
The successful registration of this Wagatha Christie trade mark provides key lessons in relation to trade mark law, such as the importance of registering a trade mark as soon as possible under the first-to-file system.
The UK trade mark law system grants trade mark rights to the first business or individual to file a specific trade mark application. Although this is subject to some basic requirements regarding registration of the trade mark, ultimately if an application is submitted before anyone else, then, should the application fulfil all necessary requirements, the original applicant shall gain the trade mark.
Due to the UK using a First-to-File system, it statistically experiences much higher rates of bad faith registrations. A bad faith registration occurs when an applicant files a trade mark registration with the purpose of using that mark to ransom a person or company. That being said, a trade mark will be refused registration (or if registered, will be invalidated) if or to the extent that the application is made in bad faith. However, it is always advisable to get any mark which relates to a business, such as a name, logo or branding, trade marked as soon as possible to prevent others from trade marking the same.
In the case of Wagatha Christie, the origin of the pun is claimed by journalist Dan Atkinson. Although Atkinson has publicly stated his belief that he came up with the WAG related pun, he did not endeavour to register the trade mark, and therefore has no rights or claim to it. The Wagatha Christie case represents the importance of registering your trade mark as soon as possible to prevent it being registered by someone else.
It is worth noting that, under UK trade mark law, a person is still able to successfully register a mark if a similar mark exists. During the application process, an Intellectual Property Office (IPO) examiner will carefully review the submitted mark and notify relevant owners of similar marks. They may then choose to either oppose or not oppose, with the former potentially leading to a costly and time-consuming contentious process.
Trade Marks and Copyright
Although it is advisable to take action to protect your intellectual property, certain works may be automatically protected under copyright law. Copyright is a type of intellectual property that protects original works of authorship as soon as an author fixes the work in a tangible form of expression. Section 5(4) Trade Marks Act 1994 provides that the proprietor of an earlier copyright has grounds to oppose the registration of a mark.
Case law has showed that it is possible that two different rights over the same work can both exist. For example, separate persons may have separate trade mark and copyright rights over the same mark. As Atkinson believes that it was him who came up with the WAG related pun, he may choose to rely on copyright law to hold some rights over the phrase. However, it is unfortunately considered unlikely that a short pun would be worthy of copyright protection.
At Berry Smith, we can assist on a range of matters relating to trade marks, ensuring that your business has vital and necessary protection over its branding. We are also able to assist with the application for UK trade marks and work closely with partners in the EU who are able to assist our clients with any EU requirements.
If you have any queries or need any assistance relating to trade marks, please do not hesitate to contact us at email@example.com or on 029 2034 5511.