Trade Marks and the Fine Bros Scandal

When brands seek to monopolise descriptive words, colours or shapes, caution is needed. And, as YouTube innovators, the Fine Brothers discovered recently, brands have to be wary of seeking control over ideas, particularly in the digital space where the concept of ‘open source’ is highly prized. Our IP Consultant Solicitor, Lucy Harrold, “reacts” to the latest scandal.

Attempts to appropriate things ordinarily in the public domain may meet with public support or public outrage. In the case of historic brands Cadbury and Nestle, they have (respectively) tried to trade mark the colour purple for milk chocolate and the shape of a Kit Kat bar. In January of this year, Nestle failed in its Community trade mark application for the shape of the Kit Kat[1] and a few years ago, Cadbury failed to obtain a Community registration for a certain pantone shade of purple for milk chocolate[2]. Such actions by companies only succeed where they can establish many years of extensive reputation in the word, colour or shape in question such that any use of it (or similar use of it) will be taken by consumers to indicate the goods or services originate with that company.

Most recently, in the USA, YouTube stars, the Fine Brothers, have been hounded out of the Trade Mark Offices by their followers. Approximately 300,000 subscribers have publicly objected to their attempt to trade mark the word ‘react’ and related phrases such as ‘Adults React’ and ‘Kids React’[3] by unsubscribing. The Fine Brothers, Rafi and Benny, pioneered the reaction video genre back in 2007 which sees members of the public recording themselves, or others, reacting to all manner of things –from film plot twists to shock pornography to cute puppy videos. The duo faced a backlash from the public who are angry at the idea of facing lawsuits, for copying the idea of the filming of reactions to YouTube clips via trade mark infringement claims.

Trade mark registrations last forever (providing they are renewed every 5 years) and can therefore outlive patent or design protection. Copyright protection is difficult to claim over a single or a couple of words and so companies and individuals turn to trade marks to assist them in protecting their scope of activity. The principle purpose of a trade mark is to act as a guarantee of origin for consumers. You can trade mark any sign capable of being represented graphically, particularly words, but you cannot trade mark descriptive signs (unless they have acquired distinctiveness) or signs that have become generic. Thus, the word ‘Postkantor’ (Dutch for Post Office) for a range of goods including stamps was not registrable in Europe and neither was ‘Doublemint’ for chewing gum.

There is a clear public policy interest in limiting the monopolizing of common words and keeping them in the ‘intellectual commons’ for use by everyone. An historic example of concerns around trade marking common words is an English case over the words ‘Fruit Salt’ in 1889 when Lord Justice Fry in the Court of Appeal warned against this attempt to appropriate as private property “the great open common of the English language” but the House of Lords actually went on to reject the danger and permit that particular appropriation[4]. Over one hundred years’ later in 1996, Mr Justice Jacob in the English High Court declared British Sugar’s trade mark registration ‘Treat’ for dessert sauces and syrups to be invalid as being an ordinary, descriptive word.

Only if a descriptive mark has acquired distinctiveness through many years of use by a trader will it become registrable. In Europe, determining this turns on the evidence of the presumed expectations of an average consumer of the category of goods in question. The consumer must be reasonably well-informed, reasonably observant and circumspect and identify the product as originating from a particular company from the use of the mark as a trade mark[5]. The Courts consider various factors including the geographical extent of use, the amount spent on advertising, the proportion of relevant consumers who identify the mark with the company in question.But, as Nestle and Cadbury have discovered, it is a high hurdle to jump.

So where does this leave the Fine Brothers?

Well, in the world of the internet, traders are dependent upon their subscribers and so, without the need for any trade mark oppositions or other action, the Court of public opinion has protected the ‘intellectual commons’ and You Tube users are free to label their own reaction videos in similar ways to the Fine Brother ones without seeking a trade mark licence. The Fine Brothers are contrite: “We realize we built a system that could easily be used for wrong. We are fixing that…The reality that trademarks like these could be used to theoretically give companies (including ours) the power to police and control online video is a valid concern, and though we can assert our intentions are pure, there’s no way to prove them.”

Judicial words from over 100 years ago demonstrate that the problems of commandeering language are nothing new: "Wealthy traders are habitually eager to enclose part of the great common of the English language”[6].

What is new, however, is the internet’s ability to find a uniquely democratic way to determine the scope of trade mark protection.

[1] Nestlé v Cadbury [2016] EWHC 50 (Ch)

[2] [2013] EWCA Civ 1174

[3] http://www.bbc.co.uk/news/technology-35470159

[4] Example from Davis ‘European Trade Mark Law and the Enclosure of the Commons,’ [2002] 4 IPQ 342

[5] Philips v Remington

[6] Joseph Crosfield & Son’s Appn ("Perfection") (1909) 26 RPC 837 at page 854