It so happens that Montblanc does. And the owner of the trademark Mark Twain would have been well-advised to listen to his warning.

Montblanc has – for as long as I can remember – offered extraordinary Limited Editions of its writing instruments, designing them as tributes to famous men (and perhaps more recently women) who have marked the world. These may be composers, writers, poets, artists, philosopher, scientists, etc… The thought, research and detail which goes into the design of these pens is absolutely fascinating. The Mark Twain edition, for example, features a cap and barrel adorned with wavy guilloche patterns, symbolizing the Mississippi river's waves, and are accentuated with platinum-coated fittings. The clip is shaped like a steamboat's chimney, a nod to Twain's early career as a river pilot, with a precious blue stone set in the cap top. The fountain pen features an 18-karat gold nib, intricately engraved with a steamboat motif…

Other luxury Maisons have similar practices – associations with celebrities or great mean and women from the past adds to their aura and their link to the past. Other brands known for their writing instruments offer similar “hommages” – Hamilton or Montegrappa being just two.

From an IP perspective, these tributes raise many tricky IP questions relating to copyright in the figurative elements featured and adapted but also with regard to trademark law. Is the name of the celebrity a trademark use in such a context? And if so, can you validly register a famous person as a trademark to prevent its use by any other than yourself? The object is certainly being placed on the market and marked with the name of the author. But it also clearly features the house brand… can one really consider that the name of the celebrity is being used as a trademark? That is: does the name of the celebrity function as an indicator of origin? And is the trademark even valid? Can you really monopolise the reference to a person who has marked humanity?

A few decades ago, personality rights were not really seen as a thing to be “monetized”. But over time, all luxury brands have had to contend with estates of famous celebrities choosing to “brand” their ancestor, dealing licenses on personality rights even where these no longer exist and filing their name as a trademark to better exploit their value in transactions. In parallel, unscrupulous characters file trademarks on famous names without having any particular connection to the person – only to shake down those brands who would choose to honour the celebrity in question.

This leads to a tricky situation where trademark registers are cluttered with trademarks and leave brands like Montblanc to face and manage risk at every turn.

So, what are the options? One option might be to file as trademarks as many “celebrity names” as possible in anticipation of Limited Editions to come. But this approach has many disadvantages:

1. It would be a colossally expensive process. Beyond the filing itself, these TM applications would be certain to provoke oppositions on all fronts.

2. Anticipating the celebrities ahead would be practically impossible. The choice of which celebrity to honour is a complex process – and securing the approval of the successors or Estate is not to be underestimated.

3. This approach would lead a brand owning a huge quantity of invalid trademarks for lack of use.

4. This would open the door to invalidation actions on the grounds of fraud and potentially damage the relationship with estates – an impossible scenario for luxury brands with a reputation.

5. Lastly, filing trademarks would be conceding that the use of the celebrity’s name to mark a tribute might actually be a trademark use.

A second option is to play it safe by securing clear written contracts with the successors and estates…. But the second option is not always as safe as one may think. Indeed, the rogue “famous people” trademarks still exist and create a risk. That is why every famous person considered by the Maison needs to be cleared with a risk assessment in which the inhouse counsel bears a great responsibility. And this is a very typical case of how an inhouse counsel will accompany a Maison’s project, truly taking a personal stake and using his/her expertise to help manage the risk…

The issue with a risk assessment is that it is only valid for a certain time. Conversely, the creation of a pen of that degree of sophistication can have a time to market which is surprisingly long … and during that time, new trademarks may be filed … and by the time the precious object is ready for launch, there is no turning back…

This is exactly the situation which led to the owner of an EU trademark on the name Mark Twain to write a cease-and-desist letter to Montblanc. As a rule, this will – understandably - cause panic and hyperventilation in the lawyer in charge… but when you do IP, you inevitably litigate (one of the many reasons I always advise young lawyers to begin their career in a law firm before considering an inhouse position).

Luxury brands are usually on the plaintiff side … but occasionally, they defend. My response to the panicked lawyer is always the same:
1. No one ever died from an intellectual property problem …
2. a lawyer’s most noble role is to defend
3. this is going to be fun
4. I might add : the best defense is attack.

And attack we did. In Germany, where plaintiffs can secure ex parte preliminary injunctions, anticipation is everything! You can consider filing protective briefs, but you can also add a cancellation action into the mix! When you are inhouse, your sandbox is interjurisdictional litigation and your rake and bucket are national procedural laws … with talented lawyers at your side, you can build castles with moats and bridges and portcullis doors! And our German lawyer was one such talent.

But I must make a digression… We were invited for a prep meeting with a mock trial in Munich. It so happened it was in the middle of the Oktoberfest. Having arrived earlier than planned, I went to visit the Alte Pinakothek (sublime!) and then walked back to the hotel where I was greeted by my colleague and where we were to meet up with our lawyer. I told her how very strange it was to see grown men walking around town in tiny shorts and bright socks, a feather in their cap… and then the thought dawned on me … “You don’t think our lawyer is going to arrive wearing…”

Just at that moment, in walked our lawyer in full Lederhosen attire, complete with a rose jauntily pinned to his lapel. My jaw dropped and I went bright red. This is a sight you cannot unsee…

But in spite of this “moment”, our lawyer had lost none of his talent and he convincingly asked the Court to cancel the trademark for its descriptive character in relation to class 16 goods where famous authors in particular would be bound to be referenced, no one would see the name of the celebrity as an indicator of origin. Moreover, filing the name of a writer like Mark Twain in class 16 was equivalent to confiscating a piece of culture. Should we consider that a new edition of Mark Twain’s novels bearing the name Mark Twain should be an infringement of the trademark?

The first instance judge did not follow our reasoning. We appealed (always appeal) and this time, the German Federal Patent Court ordered the cancellation of the trademark “MARK TWAIN”. If the Court was hesitant to consider the name Mark Twain as purely descriptive, it did agree that due to the specific characteristics of the market for writing instruments, the name would not be understood as an indication of a particular trade origin but rather as honoring the person through the creation of a dedicated writing instrument. The Court nevertheless ordered the cancellation of the trademark on the grounds it was devoid of distinctive character. According to the Court, applying “Mark Twain” to writing instruments would not be perceived as a trademark. And perhaps more importantly still, the Court considered that in the interest of ensuring fair competition and the tradition of such writing instruments dedicated to persons, there is also a need to ensure free use of such names.

Has this decision fundamentally or definitively secured the process of clearance of similar initiatives by luxury brands? Certainly, it contributes to comforting the only position that can be taken … but there is no launch that comes without a risk and the inhouse counsel’s daily role is to identify, assess, advise, help manage and reduce the risk…. A “no” has to be the last resort, failing which the business may adopt a strategy of legal department avoidance.
https://media.bardehle.com/contentdocuments/broschures/IP_Report_2014_I.pdf

In a twist of irony, I recently learned that Mark Twain was a “nom de plume” the origins of which are a little “fudged”. Samuel Clemens, author of Huckleberry Finn, held that "Mark Twain" was the nom de plume of one Captain Isaiah Sellers, who used to write river news (..) for the New Orleans Picayune: he died in 1863 and as he could no longer need that signature, “I laid violent hands upon it without asking permission of the proprietor's remains. That is the history of the nom de plume I bear”… it would however appear that said Captain died one year AFTER Clemens had adopted the name.

There is no doubt that Mark Twain himself would have registered his trademark worldwide and negotiated firmly – that would have solved the IP problem once and for all. All would then only be a question of price … but that would be a problem for the business to resolve !

Olivia Dhordain
04.09.2024