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Famous Names as Trade Marks - Part 1


Lawdit Solicitors - Expert Author

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Where trade marks concern a famous name and where the reputation does not stem from a trade in the goods/services applied for it is possible that when used in relation to certain goods/services, the name may seem to the average consumer as an indication that the goods/services are about the person whose name it is rather than as an indication that the goods/services are supplied by, or under the control of, one undertaking. For example the Court of Appeal decided that Elvis Presley was not registrable under the 1938 Act for memorabilia products in Class 3.

In the case of Arsenal v Reed it was held that the trade mark Arsenal was validly registered under the 1994 Act, even though it could and had been used by others in a non-trade mark sense. He concluded that this did not automatically make the trade mark Arsenal non-distinctive for scarves etc. Although Arsenal is the name of a famous football club rather than the name of an individual or group, a similar point arises; namely, whether the name of a person or organisation which others wish to use in order to demonstrate their support/allegiance should be registrable as a trade mark for relevant goods. The decision in the Arsenal case indicates that such protection should not be automatically refused or invalidated in these circumstances.

Therefore it seems that the right approach is to consider whether the famous name is so descriptive in relation to the goods/services for which registration is sought that it could not be perceived by consumers as anything other than a description of the subject matter of the goods/services.

Jane Coyle is a Trainee Solicitor with Lawdit Solicitors.

About the Author

Lawdit Solicitors offer services and advice for litigation, commercial contracts, Intellectual Property and IT legal agreements. We are experts in commercial law with a heavy emphasis on Intellectual Property, Internet and e-commerce law. Lawdit is a member of the International Trademark Association, the Solicitors' Association of Higher Court Advocates and we are the appointed Solicitors to the largest webdesign association in the world, the United Kingdom Website Designers Association.

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Article Published/Sorted/Amended on Scopulus 2008-07-27 14:41:27 in Legal Articles

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