Sir Arthur Conan Doyle’s Sherlock Holmes has arguably never been more popular. From CBS’s Elementary, to recent Hollywood blockbusters and the BBC’s hugely successful Sherlock, the world has gone mad for the fictional super sleuth. However, a recent dispute over the SHERLOCK trademark is one that counsel and rights owners should follow with interest if considering whether to trademark a title.

American heiress, Andrea Plunket, claims she owns the SHERLOCK trademark. A search carried out by Carrollanne Lindley and Benjamin Scarfield, of Kilburn & Strode, for WTR uncovered the registration of 19 marks in a variety of classes, including SHERLOCK HOLMES and DR WATSON, to Arthur Conan Doyle Characters Limited, a UK-registered company owned by Plunket.

Speaking to the UK’s Daily Express, Plunket said: “I have the rights, that is clear. And I will be suing the BBC for Sherlock. They are not allowed to take a character and create a new story. The same goes forElementary, the CBS TV adaption starring Jonny Lee Miller. I also have trademarks on the Holmes and Watson characters in Europe.” She also told the Daily Mail: “No one has asked permission to use my trademarks and I am confident that, if and when I go to court, I will be able to prevent the BBC making any more ‘Sherlocks’. That is my wish.” Given their existence, it does raise the question of whether these registered trademarks would be enforceable against any program using the name ‘Sherlock’.

Lindley believes it is unclear whether the marks themselves are sufficiently valid to be enforceable, as they appear vulnerable to cancellation through non-use. Furthermore, there is the issue over whether the use of ‘Sherlock’ as a title falls into trademark infringement of similar marks or goods. While franchises, such asHarry Potter, are a good example of a title being used as a trademark, they work best where the character is new and the use of the name is tightly controlled, and otherwise remains rare. “In this case what you have is a weird combination of a character with major literary and historical connections, which has been used on a generic base without there being any control,” says Lindley. “The registrations may therefore be vulnerable to attack on the basis of being deceptive as to origin, having been used without the consent of the proprietor.” Several cases that hold potential similarities include DARK FUTURE, MOTHER CARE/OTHER CARE, and most recently, NELLIE THE ELEPHANT.

Spin-off merchandise is another issue to consider, as Lindley explains. “If Arthur Conan Doyle Characters Limited have registrations in the correct classes and the BBC – for example – brought out a Sherlock game, then there is more chance of being able to enforce the mark as it is no longer being used as just a title, it is being used to indicate the source of the product. Again the registration would need to be valid for the threat to have any weight.”

Of course, trademark counsel have long been advised to  ensure they have made sufficient use of their registrations in order to counter any claim of invalidity through non-use and also establish that any reputation built up belongs to the owner of the mark, rather than being through generic non-controlled third-party use. It is also possible for a title to function as a trademark if it indicates trade origin, but control needs to be exerted by the owner of the registrations from a very early stage.

While this dispute is in its infancy, it is likely to run for some time. Plunket has previously claimed the copyright to Conan Doyle’s works was purchased from the Doyle family and her former husband, Sheldon Reynolds, produced a TV series of Sherlock Holmes in the 1950s. While her claims were rejected in court, she continued to operate as if she had the copyright anyway, leading to lawsuits with the Doyle family (who insist the rights simply passed down the family line). Federal courts in New York and Washington DC found against Plunket, and fined her for “frivolous” litigation. This dispute may not take all of Holmes’ deductive skills to solve, but certainly some time.

This blog was first published in World Trademark Review on 16 January 2014