Facebook, Easyjet, McDonalds Trademark disputes – Reason to be distinctive
September 10, 2010
Businesses are often surprised to learn that trademarks, unlike domain or company names, do not have to be the same to prevent others from using or registering them. Similar names are also covered. Some interesting examples of how trade mark protection may extend to similar names are Facebook, the Easy Group, and McDonalds.
Facebook vs ‘Teachbook’
Recently Facebook claimed rights over names for social networking sites ending with BOOK after it sued a website for educators named ‘Teachbook’. The site was created for teachers to network and help each other. However, according to a filing in San Francisco federal court the site is “Misappropriating the distinctive BOOK portion of Facebook’s trademark…in a blatant attempt to become a Facebook for teachers.”
By using the BOOK portion of the domain name Facebook claims that Teachbook is capitalizing on the Facebook trademark. The complaint claims one of the advertising points of Teachbook is that a lot of schools ban teachers from using Facebook so as to prevent its students finding out personal information about their teachers. Facebook believes that Teachbook is setting itself up as a substitute for Facebook for teachers.
The objection is to trading on the Facebook name or diluting its brand. The Facebook lawsuit followed a case by Best Buy against a priest for making a Volkswagen Beetle look like their “Geek Squad” vehicle and painted “God Squad” on the Beetle. In this case the priest agreed to remove the writing.
Teachbook’s response is that they will fight the trademark infringement lawsuit “It’s a David and Goliath situation,” said Greg Shrader from a branch of Teachbook yet to launch. ”They’re throwing bombs at a mosquito. They believe we’re going to roll over and in some respect they get to own the term ‘book.’”
Not that Easy
While it remains to be seen what the outcome of this case will be, it is interesting to look at how the Easy group have fared when protecting their brand. In 2001 easyJet claimed that Tim Dainty had infringed on their trademarks by registering the domain name “easyRealestate.com” which he used to run a low-price estate agency business. However, it was not the domain name which led to the passing-off case, but it was the way in which Tim Dainty had copied the easyGroup style deliberately. In this case the domain name was transferred to easyJet .
While EasyGroup were able to succeed in stopping easyRealestate.com using their brand, they were not so successful in 2003 against Easybroker. Easybroker, founded by fellow Greek Cyriot, Savvas Liasis, which was UK-based, had begun trading in 1999. EasyGroup lost the trademark dispute against Easybroker for using the word ‘easy’ in their name. Easybroker was founded before EasyGroup, therefore clearly not copying the word ‘easy’ used by easy Group. It seems that Mr Liasis feels that EasyGroup had met its match; following the successful verdict, Savvas Liasis said that, “It has really been a question of bullying. Not all of easyGroup’s target’s have been in the fortunate position of Easybroker in being able to afford to stand up to this.”
McDonald’s also tend to come down hard when others use the ‘MC’ portion of their name. One example of such a dispute is McCoffee, a coffee shop which after using the name for 17 years was forced to change its name in 1994. The shop in San Francisco which was owned by Elizabeth McCaughey was named as an adaptation of her surname. Other businesses that lost against McDonalds have included ‘McMunchies’ ‘McCurry’ ‘MacJoy’ ‘McSleep’. However, one UK restaurant named ‘McChina Wok Away’ won a nine year battle against McDonalds in 2001. After previously being prevented from registering McChina as a British trademark name in 1991, it was then ruled 9 years later that the McChina name would not cause any confusion among customers.
So in conclusion, although it is rarely a foregone conclusion that adopting a similar name to that of another trade mark owner will mean that you may not use that name, the uncertainty and potential litigation should be reason enough to suggest finding another name. This is especially so, for start ups that have not already invested in a name. Although it may be disappointing not to be able to use their first choice name, it is far better for the future of the business to find one that will avert litigation.
If we compared Ryan Air’s brand protection costs to those of Easy Jet, I think it is highly likely we would find that Easy Jet spends much more of its revenues on protecting its trade marks than does Ryan Air – reason enough to choose a proper name perhaps?
