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Legal Advice: Creating character similar to existing charact

 
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January7
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Joined: 25 Apr 2012
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PostPosted: Wed Apr 25, 2012 1:36 pm    Post subject: Legal Advice: Creating character similar to existing charact Reply with quote

Hi.

I was wondering what legal issues, if any, could be raised if my company were to create a brand character to one that already exists with the same name even though it is in a completely different industry.

An example being: Creating a duck character and naming it Huey (which would be similar to the Disney character from Huey, Dewey and Louie).

The name is an integral part of the character/company/product

The character itself would look completely different and the company itself is set far apart from any Disney cartoon (it is in the Automotive industry).

I understand that names can not be copyrighted as such, but I am more concerned with 'passing-off' although the character will no way look like the 'original' and will not be used to mislead customers in anyway.

Are there any copyright/trademark issues here?

The character will be used in a campaign along side other characters on social media channels in the UK.

Thanks.
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AndyJ
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PostPosted: Wed Apr 25, 2012 4:56 pm    Post subject: Reply with quote

Hi January,
It is worth saying that I don't think there are any conceivable copyright issues with your proposal. As you say, names cannot be subject to copyright, and since your duck character is not a copy of a Disney character, there doesn't seem to be any possible grounds for alleging copyright infringement.
Trade marks are much more relevant. As you have indicated, trade marks are closely associated with branding, and therefore where two forms of branding are so similar as to cause confusion in the minds of the public, then either trade mark infringement or 'passing-off' can be argued by one of the parties. But equally two forms of branding which share similarities (same name or colour scheme for instance) can co-exist if they operate in different market places.
The trade mark registration system recognises this fact by allowing marks to be registered in discrete classes (you can find more details here) and if Disney have not registered their trade marks in the class(es) you would want to use (even if you do not intend to register your own mark) then the chances of them bringing a successful claim against you are much reduced, but not eliminated.
Section 10(3) of the Trade Marks Act 1994 puts it like this:

Quote:
(3) A person infringes a registered trade mark if he uses in the course of trade a sign which—
(a) is identical with or similar to the trade mark, and
(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered,
where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.


But as you might imagine the burden of proof that there has been damage to the other brand lies with the complaining party and is normally a reasonably high hurdle to surmount.

From your example, I suggest that using a duck alone would be insufficient to meet the 'similar' criterion, as would using the name Huey etc on its own (think of the Huey helicopter made by the Bell Corporation or the Huey Show on BBC Radio 6). But using the two things together, might just be enough to get the Disney Corporation excited. And they are quite a litigious company so even if they have any doubts about it, they will tend to wheel out the lawyers and hope to remove any threat to their brand by making it too expensive for you to defend yourself.
Really the question you have to ask yourself is 'Why do I want a to use a duck figure with the name Huey, and not some other animal or name?' If the truthful answer is that you are trying get potential customers to think fleetingly, maybe subconsciously, of the Disney character then you may have answered your question. However if your branding strategy could work equally well with a duck named Archie, why run the risk of crossing swords with Disney?
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Advice or comment provided here is not and does not purport to be legal advice as defined by s.12 of Legal Services Act 2007
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