26/05/2023
Rebekah Vardy is reported to have registered the trade mark WAGATHA CHRISTIE, causing quite a stir and a lot of commentary because this is the press-given nickname of her arch-nemesis Coleen Rooney.
Coleen Rooney is the wife of ex-England striker Wayne Rooney. Rebekah Vardy is the wife of another ex-England striker, Jamie Vardy. The British tabloid press often run stories about the celebrity partners of successful footballers and for decades have been referring to them as ‘WAGs’, which is an acronym of ‘wives and girlfriends’.
In 2019 Collen Rooney noticed that the press were reporting stories about her based on her private Instagram posts. She suspected that it was Rebekah Vardy who was leaking these stories, and to prove it she restricted access to her Instagram so that it was only Vardy who could see it and then posted a number of fake stories. After enough of these fake stories appeared in the papers Rooney took to Twitter to detail her investigation and reveal the culprit. The tweet went viral. Social media and the press quickly latched on to the witty portmanteau ‘WAGatha Christie’– being a reference to Coleen’s detective work in the style of the famous novels of Agatha Christie. Vardy denied the accusation and sued Rooney for defamation. The case went to trial in 2022 and the judge dismissed the claim, finding that Vardy had most likely been passing information about Rooney to the press. The trial has since been dramatised on TV and on stage.
The application to register WAGATHA CHRISTIE was filed after Vardy lost her defamation suit. The actual owner of the registration is London Entertainment Inc Ltd., who sources claim have filed on behalf of Vardy.
Despite the fact that WAGATHA CHRISTIE derives its humour and meaning from a reference to Agatha Christie, the WAGATHA CHRISTIE application was not opposed by the owners of the AGATHA CHRISTIE trademarks. In other circumstances you wouldn’t be surprised to see the owner of an earlier trade mark with a significant reputation taking issue with the registration of a trade mark which is clearly designed as a tongue in cheek reference that will call the earlier mark to mind. For example, when Lady Gaga sued the makers of a singing cartoon character called LADY GOO GOO. Or when 3M, the owners of the POST-IT-NOTE brand, opposed the registration of the mark TOAST-IT-NOTE.
The WAGATHA CHRISTIE application covered a long list of homewares, cosmetics and other merchandise, as well as publishing, production and licensing services. An opposition was filed by the owners of the CHRISTY trade mark, a luxury linen brand, against the clothing and textile classes. The application was then divided, hiving off the opposed classes and allowing the WAGATHA CHRISTIE mark to be registered for everything else. This is standard practice when you want to expedite registration for the unopposed classes because it is only once the registration is granted that it can be enforced against others.
However, the enforcement of this registration may not be so straightforward. The term ‘Wagatha Christie’ has been widely used in the public sphere since 2019, and is already used in the name of a TV show and a play. Parallels can be drawn to KEEP CALM AND CARRY ON, a phrase that originated on morale boosting war-time posters and has since been used as a decorative theme on countless ranges of products. Many variations of the mark KEEP CALM AND CARRY ON have been registered as trademarks over the years, but with so much third party use to tolerate on the market the value and effectiveness of these registrations is diminished. And there is a risk of these KEEP CALM AND CARRY ON registrations becoming incapable of performing their essential function of identifying trade origin.
Vardy’s move to register the mark has been touted in the press as an act of vengeance against Rooney following the failed defamation suit because it may prevent Rooney from using the trade mark herself. There is no indication that Rooney does intend to use the WAGATHA CHRISTIE mark, despite the fact that it is her own nickname. But the registration of it by someone else may effectively prevent her from doing so.
If Rooney were to use the WAGATHA CHRISTIE mark the ‘own name’ defence to trade mark infringement would not be available. This defence allows people to use their birth name (or stage name, nom de plume, etc.) and not infringe third party trade mark registrations. But this defence does not extend to epithets given to you by the press.
However, Rooney is the Wagatha Christie. Consumers might be likely to assume that WAGATHA CHRSITE branded products originate with her, which could support an argument that Vardy’s registration is liable to deceive consumers and is therefore invalid.
A possible challenge against Vardy’s registration has been voiced by Dan Atkinson, the comedian and journalist who actually came up with the nickname ‘Wagatha Christie’. In a recent article in the Guardian he expressed his dissatisfaction with the registration and said he’s tempted to take action. Never having registered or used WAGATHA CHRISTIE as a trade mark he doesn’t have any registered or unregistered trade mark rights to speak of, but he might have grounds to invalidate the registration by relying on copyright in the nickname. That is, if he can prove that it is an original qualifying work and that he is the owner of the copyright. The threshold for originality might prove an issue when the copyright work is as short as two words. And there might be some difficulty proving that he was the one who created it, which has been a topic of debate in the press as others have been cited as coining the phrase.
The next person to find themselves in his shoes, posting a witty comment on Twitter and seeing this phrase blow up, might be encouraged by this story to register it as a trade mark before anyone else does. But if they do not use the mark or license it then their registration can be cancelled after five years. And if their motivation from the outset is to sell the registration to the highest bidder then the registration could also be cancelled for having been filed in ‘bad faith’.
Savvy media personalities who are involved in high profile stories such as this would be wise to register any nicknames or catchphrases that are generated in the press and online if they ever intend to commercialise these as brands. Otherwise they may be snapped up by someone else.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
