Stripping brands of IP rights could raise compensation claims, says expert

Last week the US Patent and Trademark Office's (USPTO's) Trademark Trial and Appeal Board (TTAB), in a split decision, revoked six trade marks referencing the word 'Redskins' which are owned by American football team the Washington Redskins after deeming that they were "disparaging to Native  Americans at the respective times they were registered".

Intellectual property law expert Iain Connor of Pinsent Masons, the law firm behind Out-Law.com, said that the decision seemed to be well founded. However, he said that if a similar decision was made in a case brought in the UK, brands could challenge the ruling and claim compensation under human rights legislation.

"While this seems like a common sense, well founded decision, if the same thing happened in the UK it is possible that a company having its property right confiscated could have a human rights argument in that its right to the peaceful enjoyment of property was being denied," Connor said. "The chances are the UK trade mark office would revoke the trade mark in the same way as the USPTO but that it would have deal with a compensation claim from the company for the loss of the mark."

"Having said that, the Human Rights Act also protects people from discrimination and so there is a strong argument that in circumstances such as these the right of protection from discrimination should trump the property rights," he said.

Under the Human Rights Act, businesses are "entitled to the peaceful enjoyment" of their property. The Act states that this right of businesses shall not be deprived "except in the public interest and subject to the conditions provided for by law and by the general principles of international law".

The Act also states that the right to peaceful enjoyment of property, and the other rights laid out in the legislation, apply "without discrimination on any ground such as sex, race, colour, language, religion, political or other opinion, national or social origin, association with a national minority, property, birth or other status".

Connor said that UK law makers attempted to address the tension between the competing property rights and the prohibition against discrimination in the Trade Marks Act. The Act prohibits the registration of a trade mark if it is "contrary to public policy or to accepted principles of morality”.

The Washington Redskins said that they will appeal the decision of the USPTO's TTAB.

"This ruling – which of course we will appeal – simply addresses the team’s federal trade mark registrations, and the team will continue to own and be able to protect its marks without the registrations," Bob Raskopf, trade mark attorney for the Washington Redskins, said in a statement. "The registrations will remain effective while the case is on appeal."

"When the case first arose more than 20 years ago, a federal judge in the District of Columbia ruled on appeal in favour of the Washington Redskins and their trade mark registrations. Why? As the district court’s ruling made clear in 2003, the evidence ‘is insufficient to conclude that during the relevant time periods the trademark at issue disparaged Native Americans...’," he said.

"The court continued, ‘The Court concludes that the [Board’s] finding that the marks at issue ‘may disparage’ Native Americans is unsupported by substantial evidence, is logically flawed, and fails to apply the correct legal standard to its own findings of fact.’ Those aren’t my words. That was the court’s conclusion. We are confident that when a district court review’s today’s split decision, it will reach a similar conclusion," Raskopf said.