Matthew Rippon

May 23 2007 By Matthew Rippon, The Journal

Five years ago I found myself involved in a conflict with what was then the world's biggest media business, AOL Time Warner.

My client, Claire Field, a 14-year-old from West Yorkshire, had the temerity to create a website devoted to her hero, Harry Potter. She, along with a couple of thousand others around the world, received a letter from Warner Bros' legal department threatening legal action if she did not hand over her domain name - harrypotterguide.co.uk

Cutting to the chase, Warner Bros, faced with a public relations disaster on the eve of the release of the first film, eventually backed down. I was left wondering, how did they let this happen in the first place? What possessed them to threaten legal action against young Potter fans? When I put this point to them at the time, I remember being told that they had thousands of domain names to deal with and how could they possibly be expected to examine which were genuine fansites and which were attempts to make money on the back of the Harry Potter name. I think the answer to that is fairly obvious. There were echoes of the "Potterwar" in the threats made by KFC against the Tan Hill Inn in Swaledale over the words "Family Feast", said by KFC's lawyers to constitute an infringement of its registered trademark. How could KFC possibly see the actions of one rural pub once a year to be a threat (even if it is England's highest, and therefore famous in its own right)?

But the KFC case is a little different to Potterwar. KFC's trade mark is a common combination of words that is entirely descriptive of the goods for which it is registered. It could not possibly be regarded on its own as being capable of distinguishing KFC's products from those of its rivals.

In adopting a phrase that merely describes the products for which it is intended, even if registered as a trade mark, a business does no more than create a rod for its own back. For as long as the business intends to use the mark, it will have to clamp down on unauthorised use by others.

Creating distinctive brands is a tricky business. Throwing money at the issue is not necessarily the answer. But then, if it was easy to do, the phrase brand value would be meaningless.