Use of Trademarks

[joseph benjamin]

Do model manufacturers such as Hornby and Oxford diecast seek the permission of the owners of trademarks such as Freighliner, Ford and Rolls Royce to use them on their models. I ask because I've just read in a April 2004 issue of Model Railroader that Union Pacific was suing Athearn and Lionel over the use of their trademark on models.

 

[AY Mod]

Yes.

 

Obtaining licences to reproduce branding, where necessary, is an integral part of planning products.

[Jeremy Cumberland]

Yes. Refusal or inability to come to terms is one of the main reasons for some liveries never appearing.

[phil-b259]

14 minutes ago, joseph benjamin said:

Do model manufacturers such as Hornby and Oxford diecast seek the permission of the owners of trademarks such as Freighliner, Ford and Rolls Royce to use them on their models. I ask because I've just read in a April 2004 issue of Model Railroader that Union Pacific was suing Athearn and Lionel over the use of their trademark on models.

 

 

Generally speaking, yes - but there are also cases where this is not necessary.

 

For example all of the UKs pre-grouping railways, Big 4 and of course British Railways related 'trademarks' such as logos, liveries, branding etc are deemed to have entered 'the public realm' by virtue of nationalisation and as such anyone is effectively allowed to reuse them on a model as a result.

 

On the other hand something specific like an ex-BR poster which is now owned by the Railway museum in York or one owned by a Heritage railway is not and reproducing it without express permission is not permitted even though it was commissioned and owned for a time by BR

 

So anyone is entitled to produce a model of a LBSCR A1X loco including painting it into the ornate Stroudley livery. However what they cannot do is plonk the name Stepney on the side and call it number 55 / 655 as that particular loco is owned by the Bluebell Railway.

 

A model of a class 60 in a Trainload freight livery (i.e. British Rail condition) requires no licencing - but the moment you put it in EWS / DB livery then you need approval of DB

 

More generally there are also cases where companies have not been rigorous in defending their trademarks and there are quite a few decisions where the courts have said - well if you cannot be bothered to defend your trademark for the past 20 years you cannot suddenly start doing so now. A vacuum cleaner company lost its exclusive rights to the term 'Hoover' precisely because they failed to take action in the early years and judges subsequently ruled it had entered the common language as a generic term for a vacuum cleaner 

 

All in all trademarks - which are these days grouped under the category of 'intellectual property rights' is one of those things where professional legal advise from specialist lawyers should be sought to avoid expensive mistakes.

Edited April 24 by phil-b259

[Michael Hodgson]

13 minutes ago, phil-b259 said:

All in all trademarks - which are these days grouped under the category of 'intellectual property rights' is one of those things where professional legal advise from specialist lawyers should be sought to avoid expensive mistakes.

 

As i understand it the rules are also different as between the likes of Hornby producing batches of them for sale, and an indivdual producing a on-off scratch-built example for his own use.

[Wheatley]

1 hour ago, phil-b259 said:

For example all of the UKs pre-grouping railways, Big 4 and of course British Railways related 'trademarks' such as logos, liveries, branding etc are deemed to have entered 'the public realm' by virtue of nationalisation and as such anyone is effectively allowed to reuse them on a model as a result.

Not necessarily, the Network SouthEast Railway Society owns the NSE trademark:

 

https://trademarks.ipo.gov.uk/ipo-tmcase/page/Results/1/UK00003110943

 

Most BRB intellectual property passed to the DfT, for example the double arrow, which is licenced to Rail Delivery Group. But the freight operators were sold outright, not franchised, so their IP went with them:

 

https://trademarks.ipo.gov.uk/ipo-tmowner/page/search?domain=1&page=1&id=99325&app=0&mark=UK00002137670

 

We've done this before. 

 

Edited April 24 by Wheatley

[phil-b259]

15 minutes ago, Wheatley said:

Not necessarily, the Network SouthEast Railway Society owns the NSE trademark:

 

https://trademarks.ipo.gov.uk/ipo-tmcase/page/Results/1/UK00003110943

 

Most BRB intellectual property passed to the DfT, for example the double arrow, which is licenced to Rail Delivery Group. But the freight operators were sold outright, not franchised, so their IP went with them:

 

 

 

While that is true of the "Mainline" or "Loadhaul" branding / IP was sold on to EWS along with the companies themselves - its NOT true with respect to the BR Trainload Petroleum livery or BR Trainload Coal livery for example both of which remained the property of the British Railways Board (i.e. the UK state) after privatisation and which is now 'owned by the DfT.

 

As with all Government owned stuff in the public realm there is what might be termed a 'fair use policy' which means that providing its not detrimental to the delivery of Government services (like the use of NHS branding could be) then its use doesn't need any particular permission.

 

The transfer of the NSE trademark to the NSE society happened many years after privatisation and was simply a case of their being an organisation which the DfT were happy to give it to as part of the winding up of the BRB. It is IIRC something of an isolated case and most of British Rails IP rights still rest with the DfT

 

 

 

 

Edited April 24 by phil-b259

[Wheatley]

12 minutes ago, phil-b259 said:

 

While that is true of the "Mainline" or "Loadhaul" branding / IP was sold on to EWS along with the companies themselves - its NOT true with respect to the BR Trainload Petroleum livery or BR Trainload Coal livery for example both of which remained the property of the British Railways Board (i.e. the UK state) after privatisation and which is now 'owned by the DfT.

 

 

 

 

https://trademarks.ipo.gov.uk/ipo-tmcase/page/Results/1/UK00001366470

 

https://trademarks.ipo.gov.uk/ipo-tmcase/page/Results/1/UK00001366461

[andyman7]

2 hours ago, Michael Hodgson said:

 

As i understand it the rules are also different as between the likes of Hornby producing batches of them for sale, and an indivdual producing a on-off scratch-built example for his own use.

Production for commercial gain is what the owners of trademarks are worried about. There's no automatic right for anyone to use trademarked material but if I paint Thomas in Virgin livery for my grandaughter for purely private use I am unlikely to be pursued as there is neither 'loss' to the trademark owner or material 'gain' for me or my family

[Andy Hayter]

2 hours ago, joseph benjamin said:

Do model manufacturers such as Hornby and Oxford diecast seek the permission of the owners of trademarks such as Freighliner, Ford and Rolls Royce to use them on their models. I ask because I've just read in a April 2004 issue of Model Railroader that Union Pacific was suing Athearn and Lionel over the use of their trademark on models.

 

 

 

I have posted this elsewhere before but it shows the impact of not getting permission to use a trademark.

 

Back in the 1990s Jouef produced a range of Wagon Lits coaches.   Accor Hotel Group then held the ownership of the Venice Simplon Orient Express and held the CIWL trade marks.  They took Jouef to court for trademark infringement - not sure if it was for the use of the CIWL name across the top of the coaches but if so it was also certainly for the use of the WL crest on the side of the coaches.

 

Jouef lost.  Not long after they went into liquidation to be bought up by Lima/Rivarossi  - which may be connected or maybe not.

 

 

The irony is that the VSOE was selling Jouef CIWL models in the then in-vogue crystal boxes from their on-board shop as keepsakes for their passengers.  

[fezza]

When did railway logos as intellectual property become a thing? Did Triang Hornby really pay BR to use their crest or Shell to use their image on tanker wagons in the 1960s? I suspect this was all quite recent. 1990s maybe?

[phil-b259]

40 minutes ago, fezza said:

When did railway logos as intellectual property become a thing? Did Triang Hornby really pay BR to use their crest or Shell to use their image on tanker wagons in the 1960s? I suspect this was all quite recent. 1990s maybe?

In the UK, it would seem as a fallout of privatisation based on what Wheatley has posted (I see that DB Shenker have the rights to all the BR trainload sub sector branding**) - which is disgusting* quite frankly!

 

I know that some things like the BR typeface, the double arrow symbol and even the ‘Intercity’ logos passed to the DfT with the expectation of continued use. 

 

*IP created by a Government entity and no longer in use by said entity upon Privatisation should remain the IP the nation and not some private sectors potential money-making device.

 

** https://trademarks.ipo.gov.uk/ipo-tmowner/page/search?id=99325&domain=1&app=0&mark=UK00001366470

 

[DCB]

Some companies seem remarkably stupid in failing to realise a model in their livery can be  a valuable free advertisement for them.   Unless it is a model of a Tesla with a smoke unit or similar.
However watching the Horizon Scandal rather shows stupidity is not the preserve of the less intelligent, but is manifest in some of the most intelligent and  indeed highly qualified individuals in society. 

[BR60103]

I have an idea that Lionel used to be paid to put company names (e.g. oil companies) on rolling stock.

 

Very common story that they got Santa Fe, New York Central, and General Motors to each put up half the cost of the tooling for the F3 locomotive. (Appeared as only SF and NYC for the first few years.)

 

[kevinlms]

1 hour ago, DCB said:

Some companies seem remarkably stupid in failing to realise a model in their livery can be  a valuable free advertisement for them.

Maybe, but that is up to the company themselves to decide.

 

Some companies are also VERY particular about how their liveries are depicted and any slight inaccuracy, will attract a 'correct or else' formal letter.

[GrumpyPenguin]

7 hours ago, DCB said:

Some companies seem remarkably stupid in failing to realise a model in their livery can be  a valuable free advertisement for them.   Unless it is a model of a Tesla with a smoke unit or similar.

Nobody does (AFAIK) does a smoke unit that produces thick black smoke.

[GrumpyPenguin]

11 hours ago, AY Mod said:

Yes.

 

Obtaining licences to reproduce branding, where necessary, is an integral part of planning products.

Agreed, negotiating the use of "branding" & paying the agreed fee is one of the reasons why Oxford Diecast models of the same vehicle may vary between branding.

[Michael Hodgson]

1 hour ago, GrumpyPenguin said:

Nobody does (AFAIK) does a smoke unit that produces thick black smoke.

 

 

This is what you've been looking for ...

https://store.enolagaye.com/p/eg18-high-output-smoke-grenades/

 

Just the way to respond to all those irritating whistling and chuffing noises coming from the next stand at your local model railway exhibition !

Also means you don't need worrying about not having done your rivet counting, as the punters won't notice.

[Wheatley]

10 hours ago, fezza said:

When did railway logos as intellectual property become a thing? Did Triang Hornby really pay BR to use their crest or Shell to use their image on tanker wagons in the 1960s? I suspect this was all quite recent. 1990s maybe?

When 'protection of the brand / brand values' became a thing, prior to that it seems to have been encouraged as free advertising. Since then corporations seem to have become polarized between those who protect their brand at all costs (Disney, MacDonalds) or attempt to extract every last cent from it (Boeing), and those who are more relaxed provided you aren't bringing them into disrepute.  Chris Green was famously relaxed about the use of the Virgin West Coast livery on model trains, I doubt he would have been quite so chilled if a purveyor of more adult goods had been using it. 

 

In some cases the decision can be down to one person, they may not even have a policy on it until asked. Someone on here once asked how my own employer would brand a rail-link minibus for a TOC-sponsored service should such a thing exist, Marketing were more than happy to provide advice (and a list of RAL numbers) but only because I knew who to ask. IIRC the response was along the lines of "We wouldn't paint the ends of the bus yellow because that's not part of the branding". Other times I've found Engineering colleagues checking Bachmann or Hornby livery artwork for a DMU off against our own labelling drawings. 

[Jeremy Cumberland]

53 minutes ago, Wheatley said:

Chris Green was famously relaxed about the use of the Virgin West Coast livery on model trains

Someone wouldn't allow the Virgin class 57 Thunderbird models, though, as I recall. This may well have been down to Gerry Anderson / ITV side of things rather than Virgin.

[Wheatley]

It was indeed the Gerry Anderson side of things.  

[Grovenor]

There are registered trade marks and there is copyright, its easy to muddle the two and I suspect much of the above relates to copyright. For trade marks the registration has to specify what trades the mark is to be used for and an infringement only occurs if used without permission for one of those specified trades.

You can look up the trade mark register on line and check what uses are protected.

 

[Steven B]

15 hours ago, phil-b259 said:

So anyone is entitled to produce a model of a LBSCR A1X loco including painting it into the ornate Stroudley livery. However what they cannot do is plonk the name Stepney on the side and call it number 55 / 655 as that particular loco is owned by the Bluebell Railway.

 

I find this very hard to believe.

 

Does this mean that anyone who's ever produced a model of "Mallard" has asked permission from the NRM?

 

Steven B

[RichardT]

16 minutes ago, Steven B said:

 

I find this very hard to believe.

 

Does this mean that anyone who's ever produced a model of "Mallard" has asked permission from the NRM?

 

Steven B

I wasn’t going to bother joining in this thread because there’s just too many errors and misunderstandings in it, and confusion between copyrights and trademarks, for me to be bothered to correct in my valuable spare time. But yes Steven, you are right to find the original statement hard to believe.

 

Richard Taylor

(Formerly Senior Curator at the NRM responsible for library archive, pictorial and poster/art collections and public access/licensing thereof.)

Edited April 25 by RichardT

[Paul.Uni]

17 minutes ago, Steven B said:

Does this mean that anyone who's ever produced a model of "Mallard" has asked permission from the NRM?

Mallard trademark is owned by Science Museum Group:

https://trademarks.ipo.gov.uk/ipo-tmcase/page/Results/1/UK00002557005