Westlife's lucrative plan goes west as Euro court tells them to butt out
IRISH boyband Westlife has lost the right to trademark its own name after losing
a European court battle to a German cigarette company. The ruling, which said
the tobacco firm had already acquired the brand first, now leaves the band open
to counterfeiters across Europe and means it can not be guaranteed exclusive
rights to sell lucrative merchandise based around its own name.
Judges in Luxembourg ruled that "Westlife" cannot be registered as an EU
trademark - because it is too similar to the word "West" - a cigarette brandname
that was already trademarked by the German company. And they said the fact that
Germans say "vest" and not "west" did not lessen the confusion with the
merchandise of a pop group many will know as "Vestlife".
Last night, band manager Louis Walsh described the outcome of the case as
"unbelievable" but said Westlife would be making no changes to their business.
"It's hilarious. You couldn't make it up. It's like something that I would have
made up 10 years ago to get the band's name in the paper," he told the Irish
Independent last night.
"Westlife is not changing its name. It's business as usual for us and we are
getting ready to release our seventh album."
The decision does not stop the band using its name, or putting it on its
merchandise, but does mean the chart-toppers cannot protect it as an exclusive
trademark as the cigarette brand now gets priority over the first half of the
band's name. At issue in the case was the right to trademark everything such as
t-shirts and other merchandise like posters and baseball caps right across the
EU.
The decision is a victory for the Hamburg-based firm - part of the Imperial
Tobacco group - which makes West-brand cigarettes. The firm also uses the name
for music festivals and markets other goods and services, from t-shirts to
recording equipment, under the "West" name, and other words starting with
"West". Westlife applied for an EU trademark in 1999, but the German tobacco
firm claimed there was potential confusion because the trademarks sell similar
types of merchandise.
During a five-year legal tussle, lawyers for Westlife argued that there was a
clear distinction between the group's name and the single word "West".
"The difference in length alone has a consequence that no consumer will read or
hear 'West' for 'Westlife', or vice versa," insisted the group's German lawyer,
Reiner Prietsch.
But the judges at the European Court of First Instance in Luxembourg disagreed.
They insisted the similarity was enough to confuse the "average German
consumer". It also said that visually, there was no question that there was a
degree of similarity between the marks and because the band's name was written
in a non-stylised way, the average consumer could easily mix up the two brand
names.
The judges said the previous existence of the West trademark in Germany might
mean that "the new 'Westlife' trademark, consisting of 'West' in combination
with another word, might well be perceived as a variant of the earlier mark."
They went on: "The relevant public might think that the origin of the goods and
services marketed under the Westlife mark is the same as that of the goods and
services marketed under the West mark, or at least that there is an economic
link between the various companies or undertakings which market them."
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