About the author
Vishal Dattani is a trainee trade mark attorney at Appleyard Lees IP LLP.
Vishal’s background in law means that he can decipher the key legal components in potentially complex situations. He is therefore able to raise issues, identify opportunities and offer creative solutions in an objective way.
Vishal works with a variety of clients ranging from SMEs to large corporations across a range of sectors, including food & beverage start-ups to large fashion retailers.
Sir Ringo Starr (otherwise known as Richard Starkey MBE, known internationally for his role in the Beatles) has recently reached an agreement with the manufacturers of the sex toy, “Ring O” (the mark), allowing the parties to now harmoniously co-exist.
All brands invest resources in developing a particular reputation among consumers. Where a business threatens to alter that reputation, then the owner of the reputation will usually take steps to stop it doing so.
We recently saw this principle in action when superstar athlete Cristiano Ronaldo removed Coca-Cola’s drinks from a press interview, presumably in order to distance his personal brand associated with fitness with the fizzy drinks manufacturer’s association with poor diet and health issues (see here). The footballer has 550 million social media followers and his actions knocked $4 billion from Coca-Cola’s share price.
The case
Although this case was in the context of a US opposition, many of the same trade mark principles are applicable in the UK. Indeed, Sir Ringo Starr holds trade mark registrations, for “RINGO” or “RINGO STARR” in classes 9, 25 and 41 – i.e. in relation to music, clothing and entertainment.
Sir Ringo’s lawyers initially challenged the “Ring O” trade mark application on the basis that it was too similar to his name and would damage his reputation if the mark was registered at the USPTO. “Ring O” is similar visually, phonetically and conceptually with “RINGO” – his own brand which he has already registered as a trade mark.
The key risk is that consumers may falsely believe that the former Beatles member has decided to pursue a new business range, which could ‘tarnish’ his name (i.e. damage the reputation of the earlier mark).
The settlement agreement
A co-existence (or settlement) agreement[1] was reached between the Beatles member and Pacific Holdings & Momentum Management meaning Sir Ringo Starr withdrew his initial opposition provided certain conditions were met. The key points are set out below:
- “RING” and “O” must always have a space and can only be used for adult sex toys and desensitising sprays;
- Starr’s name or image shouldn’t be, inter alia, tarnished, degraded or associated (or give the impression that it is associated) with the sex product.
- Both parties should not undertake activities, or act in a manner, which may lead to confusion between the product and the musician.
Concluding remarks
Settlement agreements are often a tidy way to conclude trade mark oppositions/disputes between parties. They tend to resolve key contentious issues such as ‘use’ or ‘territorial scope’ of the mark in question.
As the Ringo Starr case shows, despite some tricky issues to navigate around, the parties were able to reach an agreement and have likely saved long run costs of fighting a lengthy legal battle!
If you have any queries relating to this note or your intellectual property matters, please feel free to get in touch and we’d be happy to assist you.
[1] https://ttabvue.uspto.gov/ttabvue/v?pno=91246962&pty=OPP&eno=27 – co-existence agreement between Richard Starkey (i.e Ringo Starr) and Pacific Coast Holdings IP, LLC
