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An Unusual Copyright Issue of Brand Name & Product Name

 
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Steve Jones
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PostPosted: Mon May 02, 2011 12:28 am    Post subject: An Unusual Copyright Issue of Brand Name & Product Name Reply with quote

I have established a 2010 trade mark (in the UK), with a company name entitled the same, for my garden tools manufacturing business.

Let's say the name of the brand/company is 'Wombat', so "Wombat Garden Tools Ltd".

I have found that there is another Garden Tools company, based in Germany, that has been producing a special edition product with a subtitle of 'Wombat' since 2009.

For example, the name of their product could be "XYZ Ltd SuperShears Wombat".

The other company does not own a trade mark for the name, in Germany or elsewhere.

As a brand name, the name of my company is totally unique, but it just appears as that subtitle for another product.

I would like to understand whether I could have infringed upon their copyright in these circumstances, and whether the other brand is entitled to any concessions from me should they complain. It's too late to change the name now!

From my industry contacts I know they have no intentions of selling in the United Kingdom.

Finally, thank you very much for taking the time to reply!

Cheers,
Steve
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AndyJ
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PostPosted: Mon May 02, 2011 8:00 am    Post subject: Reply with quote

Hi Steve,
What you are talking about is very much to do with trade marks and branding, but I cannot see any implications for copyright. A single word such as 'Wombat' cannot normally attract copyright because it lacks the originality required of a copyright work. Here originality means originating from a human mind through effort and creativity. If two people have exactly the same idea and express it in a similar way, eg in a story or photograph, without any prior knowledge or influence of the other's work, then they can both enjoy copyright in their respective works, since there has been no 'copying', just the occurence of coincidence.

Trade marks are subject to different eligibility rules, which since you appear to have registered your trade mark, you will no doubt be familiar with. Trade marks, like patents, confer monopoly rights and are both territorial and specific to the class of goods and services they are registered in. So your trade mark in the UK can co-exist with a similar mark which is in use in Germany as long as neither compnay seeks to operate in the other's territory. But once either tries to move into the other's market then, if there is likely to be diminution of either company's brand through confusion in the minds of the buying public, the matter may have to be resolved by one or other company being denied permission to use their trade mark (whether registered or unregistered). Greater protection within the EU can be obtained by registering your mark as a Community Trade Mark. However since the German company seems to have been using the word which forms part of your trade mark for longer than you, albeit without having registered it in any way, they might have grounds for opposing your CTM application. At present if neither company intends to operate in the other's geographical market this is less of an issue. However, if you trade on the internet, this might become an issue. You can find more details about CTM registration on the IPO website.

So I think you have nothing to worry about as far as copyright infringement is concerned.
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Steve Jones
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PostPosted: Mon May 02, 2011 4:25 pm    Post subject: Trademarking in the USA? Reply with quote

Thanks Andy for your detailed reply, which I really appreciate. I liked your discussion of the origin of copyright. The actual name is (almost) in regular public expression, and so is not made-up like "Wexzler" Razz

I am pleased that you feel the UK operation will be 'safe', however the proposition of trading in the United States is attractive to me too, maybe even more so than the UK. Although, Germany would not be an attractive market, so that's fine there.

The other company is selling in the USA via the Internet; something you hinted at about causing problems. Will they have any claim to copyright over there? If so could be worth looking into filing a trade mark in the probability that it will go unopposed for a while.

One thing you didn't mention was whether there could be any differentiation between my business using 'Wombat' as a brand name, and the other using 'Wombat' as a product subtitle; in order that both uses could peacefully coexist Question
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AndyJ
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PostPosted: Mon May 02, 2011 7:29 pm    Post subject: Reply with quote

Steve,
the way that copyright law works in the USA is reasonably similar to the UK as far as it affects single words, so I don't see any new copyright issues if you decide to enter the US market.
Next is the question of registering your trade mark in te USA. The United States Patent and Trademark Office* is the place to go. They have a search facility so you can see if your particular wording is already registered there. It also explains how the registration service works.
And finally you asked about whether there was any difference between using the word as part of the trade mark or as a subtitle or strapline. The answer as far as the UK and the EU is concerned is no. There is a European Directive (Directive 2008/95/EC) which is intended to harmonise trade mark regulation which says the relevant restriction is "using in the course of trade ... any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusionů" and this has been interpreted by the courts to mean words closely associated with the identity of the goods, and not just the trade mark itself. There is a some caselaw on this. Perhaps the most relevant is Hasbro Inc v 123 Nahrmittel GMBH [2001] EWHC 199 CH. Hasbro make the children's modelling compound with the trade mark 'Play-Doh'. They brought a case against Nahmittel over the latter's product 'Yummy Dough - the Edible Play Dough' claiming that the use in the strap line of the words 'play dough' infringed their Community Trade Mark. Hasbro won, because the court decided there would be confusion in the minds of purchasers as to the origins of the two products. It's an interesting judgement to read because it shows how the courts go about analysing these sorts of case, but be warned it's fairly long!
I hope this helps.

* The Americans write the term trademark as one word.
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Steve Jones
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PostPosted: Wed May 04, 2011 2:57 am    Post subject: Thanks again Andy! Reply with quote

Thanks Andy for the reply again, you sure know your stuff about TM!

Particularly the case law overview was helpful to appreciate there is no differentiating between the location of where a trade mark infringement may occur in the title of a product or its strapline.

The most significant thing to come out of this conversation is the argument that the mark 'lacks creativity' and thus could be reasonably duplicated by different people. Another example I can add to this is 'Supersonic'.

I'll try to come back with a more controversial example that could still adhere to the 'reasonable duplication' principle, as the TM we went with wasn't quite as obviously familiar as 'Wombat', but still by no means a new word.
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PostPosted: Fri May 06, 2011 12:43 am    Post subject: Just read that case... Reply with quote

Sorry to double-post, but it's unrelated to my last.

That case was certainly thorough in its investigation. It describes the conditions behind the assessment of 'passing off':

"(1) that the claimant's goods or services have acquired a goodwill in the market and are known by some distinguishing name, mark or other indicium;

(2) that there is a misrepresentation by the defendant (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by the defendant are goods or services of the claimant; and

(3) that the claimant has suffered or is likely to suffer damage as a result of the erroneous belief engendered by the defendant's misrepresentation."

The source of this is about 3/4 down the case review of Hasbro Inc v 123 Nahrmittel GMBH [2001] EWHC 199 CH.

Now, in my case for (1), it is certainly not an instance of David vs. Goliath, as the other company's products which feature the e.g. 'Wombat' name, occupy as little of the total market as mine will.

For (2) I think not, as the products look totally different, and for (3) the other company would be highly unlikely to suffer damage.

Another interesting fact; the other company never features e.g. 'Wombat' on the product or packaging, only in website/brochure descriptions.
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AndyJ
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PostPosted: Fri May 06, 2011 11:17 am    Post subject: Reply with quote

Steve,
Having re-read the whole thread, I am not sure of the exact context of your query. First of all, if you have registered your trade mark in the UK, as I inferred from your first post, then you are on the high ground, and it would be for the German company to dispute the validity of the registration, possible on the grounds of prior claim. However in the UK at least, that would be unlikely to succeed because obviously the German company aren't trading in the UK (other than via the internet). Secondly I do not think there is a viable claim of passing off, given the disparity between the ways in which the two companies appear to be using the word you have given the alias 'Wombat', and the fact that neither company appears to have a widespread brand identity (based on your assessment). However, in all of this I note that you have not actually said that the German company have indicated that they are contemplating a challenge, or indeed if they are even aware of your use of the word.
If you decide to enter the US market, and the German company do also, it is somewhat of a fresh start It may well be a case of who is first to successfully register the trade mark there, since I assume neither company has established any significant level of trading in the US which could lead to the formation of brand awareness, and so to a claim of passing off.
Since you seem happpy (?) to trawl through court judgements, here's another interesting case involving the doctrine of honest concurrence, which has some relevance to your query. Be aware that that case is not yet fully settled, because the European Court of Justice has yet to rule on the references made to it. However the subject matter of the references has no real bearing on the facts of your case.
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PostPosted: Sat May 07, 2011 4:55 am    Post subject: You got it right! Reply with quote

Hi Andy,

From what you said above, I think you have an exact understanding of my situation and I thank you for all your insights.

The other company is doing some trade in the US market with their special edition product featuring the e.g. 'Wombat' name, but 'I feel' this is insignificant to warrant passing-off.

They are not by any means objecting to our usage, nor apparently aware of it.

I think/hope that interest on their part would only be prompted were I to registered the TM in the USA. However, from my point of view, I would not feel defensive of 'the brand' as to ask them to cease and desist usage of my TM.

I'll look through that case when I have a spare 1/2 hour!

Cheers,
Steve
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