Famous Names as Trade Marks - Part 1
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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.
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