trademark question

If you are worried about infringement or your work has been copied and you want to take action.
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tigermatty
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trademark question

Post by tigermatty » Thu Apr 22, 2010 10:37 am

Hi all, first post, please be nice...

My local newspaper (like many other local newspapers) used to print a saturday evening special sports paper which is now defunct, as are almost all other local sports papers inthe uk. Due to the fact that a lot of these papers were printed on coloured paper they got nicknames like the green'un, pink'un, yellow'un etc and my local paper still has a trademark registered as 'The Citizen Pink'un' on the government database under the category 'printed perioicals relating to sport', depsite the sports supplement being out of print.

My question is am I likely to be infriging copyright if I create a sports website (ie. not printed media) using a similar name but replacing the word 'citizen' with something else? Don't want to apply for a trademark and end up in court...

any advice much appreciated.

matt

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AndyJ
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Post by AndyJ » Thu Apr 22, 2010 12:07 pm

First of all, don't confuse Trade Marks with Copyright. Although a trade mark (such as a logo or a particular typographical arrangement) can also be copyright as an artistic work, the two things are separate parts of what is referred to as Intellectual Property or IP. Inded they are dealt with in separate pieces of legislation. I don't think there is a copyright issue here.

Coming back to your question, trademark legislation is basically intended to protect a company's specific product(s) or service(s) from what is known as 'passing off', that is, the good will, quality and reputation of product A being stolen by the makers of product B. That is why trademarks are registered in categories or classes - as you mention in your question. So it is possible to have the trademark of 'Apple' apply separately to computers and also to a record label. This was a real case of trade mark dispute where the courts held that there was no confusion in people's minds about the two products, so the same word could be used by both companies, although clearly they had to have different logos.
The trademark you ask about - The Citizen's Pink'un - is very specific and using any of the three words on their own would not amount to infringement of the registered trade. Indeed, the Financial Times is often referred to as the Pink'un, a much closer association because it is also a newspaper. Of course that is not trademark infringement becaues the FT does not refer to itself as the Pink'un.
I have checked the IPO for details of the registration for The Citizen's Pink'un and I note that the registrant is shown as Gloucestershire Media Ltd / Daily Mail and General Investments Ltd and as you say, the trademerk is registered in Class 16: Newspapers. That class does not include the internet, just products printed on paper or card.
More significantly for your project, another newspaper group, Archant, own and operate a Norwich newspaper and website http://www.pinkun.com/ which appears to be an online sports paper, as well as a related Facebook page and a Twitter account. I do not know if there is any business or licensing relationship between Gloucestershire Media Ltd and Archant, which would explain the use of the title Pink'un in this context. If there is no link it would seem that the trademark is not being being defended by its original registrants in the case of this site which appears to have been in existence for over 10 years.
So really, I think your problem lies not with Gloucestershire Media Ltd and their trademark, but with Archant, if you try to register a URL based on the word Pink'un or Pinkun, as you want to cover sports news which ithey also deal in. This could turm into a URL name dispute. See: http://www.internic.net/faqs/udrp.html for further details.

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Post by tigermatty » Thu Apr 22, 2010 1:57 pm

Excellent reply, cheers. I have seen the norwich pink'un website, as far as I know the Daily Mail Group and Archant are arch rivalsI was toying with the idea of calling it the gloucestershire pink'un, and it would be purely covering sport related to gloucestershire. As the content would be completley different do you think there would be an issue with that?

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Post by AndyJ » Thu Apr 22, 2010 3:29 pm

No, I think you will be OK with the Gloucestershire Pinku'un as being sufficiently distinct from any other similarly named site. I think it's fair to say that, as you mentioned in your opening question, the formula colour + 'un is pretty widely used and accepted as a generic title associated with sports news. Good luck with your venture.

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