Monday, 9 June 2014

Part III: Lessons learned from the 'Nollywood' trade mark sequel

As this Leo wraps up the 'Nollywood' trade mark sequel (see Part I and Part II), news just coming in is that the Nigerian Government's financial support is now making an impact in film production. [Afro Leo thinks that the various figures bandied about - e.g. N200 billion Naira i.e. over $1 billion dollars - are quite huge sums for an industry which was built from the bottom up and known for its self-sufficiency, e.g. see here and here]. 

Anyway, what lessons did this Leo learn from his USPTO expedition on Hollywood, Bollywood, and Nollywood trade marks? First, the opposition clock is ticking fast for any Persons, with reasonable grounds, interested in stopping ‘nollywood’ from becoming registered as a trade mark in the U.S under Class 3.

(1) The 'Hollywood Effect' ('llywood' or 'wood'): Globally renowned for entertainment
Hollywood, Bollywood, and Nollywood -the three largest film producing industries- are now generally regarded as generic monikers for the film industries in the U.S, India (although Bombay, to be precise) and Nigeria, respectively. The names of other film industries (e.g. Dhallywood, Lollywood and Hallyuwood) are said to have also been inspired by the 'Hollywood Effect' in identifying their craft. We can all agree that the 'Hollywood Effect' has given prominence to Bollywood and Nollywood; hence, why we see them compared side by side. And, it's not that difficult for film/entertainment consumers (particularly, English-speaking ones) to now easily recognise names ending with 'llywood' or similar, as signifying film industries.

With that in mind, it's unsurprising to see attempts to ride on the coattails of these film industry brands for various entrepreneurial ventures. [Is it wise to build a brand with 'Hollywood' or 'Hollywood Effect' nicknames? Is there brand equity to be had from these names?] Indeed, one can decide to name his/her coffee shop 'Nollywood', and even go as far as obtaining a trade mark for it - if others aren't already using it as a registered or unregistered trade mark. However, trade mark law and practice principles tells us that it would be quite different and difficult when it is to be used for films and associated products and/or services such as marketing - online or offline. We equally know that trade mark practices differ from one jurisdiction to another: for example, in Europe, a trade mark might be descriptive in one Member State but distinctive in another. It all comes down to what consumers perceive: what does the mark say about the goods or services or where they come from?

(2) Combination word marks are popular for 'Hollywood' and 'Hollywood Effect' names
Combination word marks including the word ‘Hollywood’ or ‘Bollywood’ are the most popular and more likely to be registered and/or enforced/maintained; only a handful of these marks cover Class 41 or other related Classes such as 38. This Leo found very few standalone word marks for ‘Hollywood’ or ‘Bollywood’ under Class 41 (entertainment - particularly, movies), but more in other Classes - typically covering abstruse goods or services, for example ‘BOLLYWOOD’ for live plants. [Also, there is currently an application for ‘HOLLYWOOD’ for cigars]. Generally, it looks like it's a better approach - when choosing to register descriptive or generic words like 'Hollywood' or 'Hollywood Effect' nicknames as a trade mark- is to go for a composite mark (e.g. figurative mark with word elements) or a pictorial /stylised form of the word.

(3) Disclaimer practice
Many of the applications and/or registrations for word-only composite marks bear this disclaimer: “NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "HOLLYWOOD" APART FROM THE MARK AS SHOWN”. As a matter of practice, this is often required by the USPTO since ‘Hollywood’ is not a distinctive word. Further, as this Leo understands it, this practice can become helpful pre and/or post-registration, but may not be required in certain circumstances such as where the mark, as combined, form a distinctive meaning or commercial impression different from each of the words, considered separately.

(4) The ‘Register’ is important and there isn't a monopoly, as such, over the word
There were a few marks, e.g. 'BOLLYWOOD’ under Class 38, which were strategically placed on the Supplemental Register instead of the Principal Register. This appears to be the suitable approach, with considerable benefits, for descriptive marks able to acquire a distinctive character in the future. As expected, there is no monopoly to use the word ‘Hollywood’ or ‘Bollywood’, as there are numerous registrations with that word - especially as a combination. Subject to the likelihood of confusion exercise (e.g. here and here), the same will apply to ‘Nollywood’.

Lastly, whilst there were a considerable number of applications and registrations for ‘Hollywood’, ‘Bollywood’, and combinations thereof, this Leo didn't see the same for ‘Nollywood’. The Registrant in question is the only player in the market, so to speak. The UK IPO’s database also reveals a small collection of marks, but owned by various persons. Does this demonstrate little appetite for 'Nollywood' as a registered trade mark?

(5) Don’t think you can always DIY forever
Registering a trade mark with the USPTO or UK IPO, without the assistance of a trade mark lawyer, may make one feel smug. However, we know that it is largely possible because these two brilliant IP offices strive to simplify the process to make life easy for all users, and the fact that a great deal of information on trade mark law and practice is readily available online. Even at that, certain Registrants may well have not looked well beyond registration - when all sorts (e.g. here for UK or here for the U.S) can happen. At such point, it often becomes a dilemma between fight or flight, with its associated costs.[For Registrants issuing threats i.e. Cease and Desist letters, Afro Leo tells me not to forget the groundless threats provision – if they ever think of playing in the UK

(6) Is this a wake-up call for 'Nollywood' stakeholders?
Not really. A registered trade mark - albeit capable of being maintained in perpetuity - grants a limited monopoly and it's open to various challenges throughout its lifespan. This Leo could even go as far as saying that many bad trade marks are largely unenforced, eventually get weeded out by others or left to lapse. [He, however, notes the implication of the incontestability provision for U.S trade marks surviving for five years

Mr Fawole’s piece suggests that the Nollywood community in Nigeria expressed concern about this development. Nevertheless, it isn't surprising that an individual had to take it upon him/herself to secure his/her rights, since the current fragmented structure (e.g. here and here) makes it difficult to figure out who should take action. [Afro Leo draws this Leo's attention here to see what concerned individuals do to bring down a trade mark in the USPTO]

Going further in search of possible interested parties, shouldn't the Nigerian Government (in particular, the Ministry of Culture) be involved in this? [Says Afro Leo: “It looks like a State may be able to act as the Petitioner or one of the Petitioners. It’s not uncommon to read about governments having a say (or some might say, posturing) on things they view as cultural or national property”] True, remember the South African Government's response to Rooibos (see here and here)? If you think governments shouldn't seek to get involved in trade mark litigation, check out who is involved in this recent opposition against the registration of 'ICELAND' as a UK trade mark. 

Finally, what about the owners of the YouTube Channel, NollywoodLove? Shouldn't they be keeping a closer eye on this? Initially, this Leo was wondering why they didn't rush to obtain a trade mark as soon as they commenced trading; moments later, he quickly realised that it might be because of the legal advice, if any, received. Having existed for a number of years, with considerable goodwill, shouldn't they be thinking of going for it now?  

This Leo still remembers very little, if any, of his postgraduate IP studies some of the basic points to bear in mind when choosing a trade mark. (a) When one decides that registration is appropriate, it's important to consider the strength of the mark in withstanding IP office examination, post-publication opposition, and post-registration attacks, among others (Is there commercial sense in spending money and time to acquire a trade mark that one would be scared of enforcing?); (b) The idea is to try to avoid one’s choice moving towards the descriptive bracket or worse, using generic terms, which are often found in dictionaries; and (c) To be on the safe side, it’s better to either make one up or use an existing word that doesn't describe or relate to, in any way, the goods or services applied for; e.g. Apple® for computers, computer software, computer peripherals, etc.

To this Leo, it seems that the Petitioner has picked the appropriate battle, at the right time, with legitimate grounds to mount a challenge. Perhaps, attacking the other registered mark wouldn't have been a bad idea since it also covers online business. As for the Registrant’s latest application, this Leo is unsure if it is worth challenging - considering, as we saw in Part II, that ‘BOLLYWOOD’ is registered for goods under Class 3. [The USPTO might not accept that as supporting evidence, but it looks like the Registrant must have done his/her homework]. Moreover, that application has nothing to do with goods or services in the entertainment and/or related industry such as marketing. The potential difficulty may well be that the application’s coverage is too broad or if successful, proving ‘use’ for maintenance purposes. 

This 'Nollywood' trade mark dispute may well become yet another example to demonstrate why initial legal advice (or even representation), from a suitably qualified IP lawyer, is imperative before going ahead with registering IP rights.

Afro-IP will be keeping an eye on this case, as it develops.
NB:The comment section is currently disabled until the end of the cancellation proceedings
Previous Afro-IP posts on Nollywood here and here.
An interesting text on how Bollywood is going global, here