Why Black Cabs need Image Rights
The Role of Image Rights to Corporate Entities – The Case of the Black Cab
Most successful businesses tend to become incorporated entities. Image rights, although initially a personal concept, have expanded to encompass legal entities, and can now be treated as a separate class of intellectual property rights – one that provides a safety net to all other intellectual property rights.
On November 1, 2017, the English Court of Appeal  EWCA Civ 1729 rejected the London Taxi Company’s (LTC) appeal against a finding that the 3D trademark and design right were invalid. The Court held that the city’s famous black cabs lack distinctive character. Had the LTC registered their image rights in Guernsey under the Image Rights Ordinance 2012 (IRO), they would have been protected from the infringement claimed in their original case.
Strategic brand management is at the core of any global company’s success (see, Saucy Fish Company). The management of corporate identity at a fundamental level has a considerable impact on the perception of a brand and consequently the value of the brand. In other words, identity is the cause; the brand is the effect. Corporate identity or personality is the foundation upon which to build the more traditional elements of brand protection. The Public Carriage Office (PCO), Transport for London (TfL), and the Mayor of London believe this to be true of the black cabs of London. Both PCO and TfL were “keen for British traditions to be preserved with regard to the ‘look’ of any new licensed London cab” in order to “ensure they are recognisable as taxis licensed for hire in London.”
Brand management focuses on two aspects of image rights:
- economic exploitation through licensing arrangements; and
- protection through (possible) registration and (if necessary) infringement proceedings.
Image rights are a recent, but increasingly important tool with which to achieve a protectable corporate personality, involving the commercial exploitation and protection of identity and associated images. In the case of the black cabs, their trademarks were held to be invalid and therefore could not be infringed. Nor could LTC invoke the common law tort of passing off. Traditional intellectual property rights failed to protect the image/identity/personality of the LTC. Image rights could have protected them.
The ability to register one’s legal property as an image right facilitates both the economic exploitation of the right and its protection. Historically, copyright and trademark legislation has been used by brands attempting to carry out this function. These tools are restrictive and purpose-specific in their application. If one wishes to stop another from trading on their image or personal goodwill without their consent, a combination of the legal remedies is cobbled together to build a less than perfect case to restrain an offending party and account for profits earned. This is what occurred in the London Taxi Company case. They applied trademark infringement and passing off. The result highlighted the obvious void in the law. Before the enactment of the Guernsey Image Rights Ordinance 2012 (IRO), there was no remedy which enabled a person or corporation to adequately exploit and protect distinctive attributes of their character or personality. Now there is.
To understand the relevance of image rights to corporate customers, an understanding of what the new field of registered image rights protects is first needed.
Corporations can register as a personality to utilize the benefits and protections of Image Rights. The registration of a personality immediately captures all present, historical and future images associated with that personality. This is in contrast to the static nature of trademarks which require an updated trademark registration with every variation on the mark. Gucci fell into this trap and lost the primacy and distinctiveness of many of its marks. In the case of the black cabs, as the specific shape and design of the vehicle has evolved, so too would their image rights. These various ‘images’ that are both static and dynamic are costly to register individually. Moreover, as trademarks, these images are limited by class and geography. This is how Frazer-Nash was able to convince the court to revoke their Community Trademark for non-use. Fortunately, registered image rights have no such limitations or restrictions.
What is a ‘Registered Personality’? According to Section 1(1) IRO, Personality refers to the characteristics of the “personnage” who is described as follows: “(a) a natural person, (b) a legal person, (c) two or more natural persons or legal persons who are or who are publicly perceived to be intrinsically linked and who together have a joint personality (“joint personality”), (d) two or more natural persons or legal persons who are or who are publicly perceived to be linked in common purpose and who together form a collective group or team (“group”), or (e) a fictional character of a human or non-human (“fictional character”), Whose personality – (i) is registered under this Ordinance (and is accordingly a “registered personality” for the purposes of this Ordinance), or (ii) is the subject of an application to be so registered.”
Section 1(6) IRO defines a “legal person” as a body corporate or other body having legal personality that – (a) is currently in existence, registered or incorporated, or (b) has ceased to be in existence, registered or incorporated, for example by reason of having been liquidated, dissolved, wound up or struck off, within the period of 100 years preceding the date of filing the application for the registration of the personality.
In the context of the law (IRO s5(1)(b)&(c)), ‘image’ is framed extremely widely and means the name of the person (company or product) and includes:
“…the likeness, appearance, silhouette, feature, . . . , and any other distinctive characteristic or personal attribute of a personage, or…
…any photograph, illustration, image, picture, moving image or electronic of other representation (‘picture’) of a personage and of no other person …”
Therefore, if the personality concerned is capable of expressing something unique by any means, it can be protected as a ‘registered image’ under the law. LTC made this argument in the lower court to demonstrate the distinctive character of its taxis. They had had a de facto monopoly of taxis having a similar appearance in London for decades. No other shapes were indicative of taxis in London. LTC, TfL, and PCO had a policy to preserve the distinctive appearance through successive models. The steps these companies took to educate the public regarding their taxis. The shape has acquired a secondary meaning – it signifies a licensed London taxi. Sir Charles Masefield summed up the Metrocab as “instantly recognisable as an iconic London Hackney Cab.” They have a reputation to uphold, goodwill to sustain.
Unfortunately for LTC, Lord Justice Kitchin found that neither goodwill nor distinctive character were present to protect the black cabs trademark.
Should LTC choose to register the personality of its black cabs, they would be in a better position to protect its images as they grow and change while retaining their inherent distinctiveness.
Image rights are commercially valuable and build upon international standards for intellectual property. No other laws approach the scope and flexibility of the IRO, which has been drafted from a clean slate and in a bespoke manner to accurately fill the existing legal void and cater for the registration, exploitation, and protection of image rights. However, the Guernsey law relates to, and is compatible with, elements of the laws of other jurisdictions and this may be seen as further confirmation that the world will be receptive to the protection offered by the Image Rights Ordinance. No other jurisdiction does what Guernsey does now. They provide the safety-net upon which brand value ultimately depends.
For more information about Registered Personality and Image Rights, visit icondia.com.
© Icondia Ltd 2017