Interesting. Am I reading this correctly?typonaut wrote:There is a case of a toy maker including the Opel logo on the model of a car, Adam Opel v Autec, which finds that faithful reproduction of a scale model, including the logo of the manufacturer, is not a trade mark infringement.
I think you would have to consider when, or under what circumstances, you could create confusion as to origin in the minds of the public.
Clearly the trade mark holder may use similar images to promote their own marks/products, but that isn't quite the same issue (unless you are copying their designs).
Faithful reproduction on a scale model isn't an infringement in itself, but if the main car company market its own scale models under that trademark and the existence of the 3rd party scale model company's products affect the sales of the car company's own scale models, then it's an infringement?
Do Adam Opel not have a possible case for Design Rights infringement against the replica manufacturers in this situation?
Am I right in thinking that the 3rd party company's logo being prominent on the packaging, instruction manual (and presumably the underside of the replica car) is the decisive factor, as it takes away the potential confusion in the marketplace as to the origin of the replica?
So in theory, if we, rather than just selling a tshirt with a photo of an F1 car on it, gave the tshirt a prominent logo of our own design above the photo to distinguish it from official merchandise of the motorsports team being shown in the photo, then we're more likely to be ok?
Say for example we came up with a name for the range, like "Motorsports Fanwear" and displayed that name in big letters across the top of the chest of the tshirt, above the photo in each of the designs. Would that make it ok?
And if so, would this ethos not also be applicable to the "passing off" side of things in the case of tshirts about movies, TV shows, bands or celebrities?
E.g. a "Film Buff Unofficial Fanwear" logo somewhere prominent or at least noticeable on the "Nostromo Flight Crew" tshirt mentioned earlier in the thread?
We have a sort of "rival" local tshirt company with a similar catalog of products, that makes official licensed products for some movies but also a large number of unofficial "inspired by..." tshirts. That company even goes so far as to say on its product pages "This tshirt design was inspired by Star Wars" (or whatever). And so, one of the most common things I hear when I'm saying "no" to people bringing me designs, is "CompanyX get away with making designs like this about this movie, so why can't we?" (obviously that's not the actual company name).
I keep saying "They might've got away with it so far, but it's surely only a matter of time before they get hit with a massive lawsuit which bankrupts their company and lands the directors in prison".
They then tend to look at me as if to say "no way, that won't happen, there's a thousand companies on the net selling 'inspired by...' tshirts. Why would the authorities pick on that one, or us for that matter?" and I end up feeling like the bad guy for telling them we can't use their design they've spent half the day making before showing it to me. (Thankfully, they've started asking for my input earlier in their design process, so this is happening less frequently now than it was at first.)
Am I wrong about this? Are our rivals not being hit by lawsuits because their "inspired by" designs are actually OK as long as they appear to a casual observer to be unofficial "inspired by" designs, or even to only be relevant to someone that has seen the movie due to the design not actually mentioning the name of the movie?
For example, a tshirt with the words "I Use The Force like Luke" or "I love Chewie and R2" with original hand-drawn silhouette characatures of the characters mentioned would be clearly "inspired by" Star Wars, but surely nobody on the street would ever believe they were genuine Lucasfilm merchandise? Would that make them OK or is it, like I've been telling the designers, that it's only a matter of time before our rivals get hit with lawsuits?
Our rival seems to operate under the "use a design until we get a cease and desist letter, and then remove that particular design and carry on", but if I understand correctly the info I received earlier in the thread, a C&D wouldn't necessarily be the only action they might receive, and that a large company like Disney might hit them with a court summons simultaneously to sending the C&D letter?
Of course, part of the "problem" is that our own tshirt company began on the back of a successful website design and Search Engine Optimisation company, and so when you searched for the name of any number of popular TV shows and movies with the word "tshirt" afterwards in Google, our website was almost invariably in the first page of results with one of our old "inspired by..." designs.
I keep telling them that this would make us a prime target if any of these TV or movie companies were to think we were infringing their intellectual property and decided they wanted to make an example out of us.