Whilst the classification rules apply to the majority of trademarks, famous marks operate under slightly different rules. A famous mark has a much broader scope of protection than an ordinary mark. This is due to its widespread reputation or recognition which means it is not subject to classification restrictions. It enjoys the same protection as if it had been registered in each of the 45 classes. This broad protection given to well-known marks is afforded by most industrialised countries.
A while ago we wrote about famous names as trade marks which have resulted in numerous high-profile disputes. The situation is no less complex and tricky today. The basic rules about famous marks are outlined on the INTA website. Essentially, the significance of the rules is that when you’re picking a new name for a product or service, you need to beware of adopting famous brand names such as Martini or Coca-Cola for your business. This is because even if you had nothing to do with drinks, and were in a completely different industry, Martini or Coca-Cola could stop you from using their name.
For example, although you might see multiples of the same name used for other brands, such as Polo, you will probably notice that there are no multiple Microsofts or Coca-Colas.
Marks that became famous long ago, or quickly, such as Twitter, or Google, are famous enough to have a complete monopoly over their name worldwide. There have been applications to register Twitter for wine, beer and other alcoholic drinks, as well as attempts at other categories. The objection to such applications is that by using the sign, the applicant is taking unfair advantage of the mark’s fame and its use could have a detrimental impact on the well-known trademark.
Trademark infringement and famous marks
For trademark infringement cases involving famous marks, the requirements for proving infringement are different from those found in other cases. Rather than having to prove that someone else’s use of a name is confusing to customers, the trademark owners instead have to show that the other user is ‘diluting’ their brand by ‘tarnishing’ or ‘blurring’ its famous mark. A case demonstrating how a famous mark is protected from being ‘tarnished’ involves Hasbro Inc.
Hasbro Inc. v. Internet Entertainment Group
One of Hasbro’s most popular games is a board game called ‘Candy Land’, which is targeted at young children and since 1949 has been advertised as a ‘child’s first game’. The whole design of the game was focused on using bright colours, and wholesome images, which helped make the games so popular. .
However, in 1995 Internet Entertainment Group (IEG) acquired the Internet domain name candyland.com, using it to launch a sexually explicit website. Hasbro launched a lawsuit against the company on the grounds of trademark infringement.
There is no danger of people confusing an adult entertainment site with a kid’s board game, so under normal trademark regulations Hasbro would not have been able to prevent IEG from using the Candy Land name.
The issue Hasbro was taking IEG to court over was that its use of the Candy Land name would tarnish Hasbro’s own trademark.
‘Dilution by tarnishment’ is defined as ‘the association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark’.
IEG lost the case, and was ordered to stop using the ‘Candy Land’ trademark and turn over the candyland.com domain to Hasbro. The outcome of the case was extremely costly for IEG as it had paid over $20,000 to acquire the domain name, and had spent an additional $150,000 on advertisements for the site.
An action involving trademark dilution by blurring has to prove that the similarity between a mark and a famous trademark will damage the uniqueness of the original mark through blurring.
An example of blurring would be if a company were to start selling shoes under a famous name such as Kleenex. Again, in this case it would not matter if the two products had no chance of being confused, and that customers would realise each product is made by different entities. What matters in such cases is that the distinctiveness of the mark is lessened. No longer would people associate Kleenex only with the tissue company, but also with shoes, ‘blurring’ the famous mark.
What makes a mark ‘famous’?
Beyond household names the issue is not always straightforward. A mark may be well known in one country but not in another, and it depends on whether the public in the given territory is familiar with the mark.
Absolut Vodka v. Absolute Radio
An example of a case where a well-known mark failed to stop another business using its name is the drinks company V&S, Vin & Sprit, which owns the Absolut Vodka brand. It issued proceedings against Virgin’s Absolute Radio for trademark infringement and passing off on the basis that there was a risk of confusion with its brand. Absolute Radio was registered as a trademark in 2003, and Absolut was aiming to have the trademark revoked.
After 18 months of wrangling, a confidential settlement ensued whereby Absolute Radio was able to continue using the name.
In conclusion, avoid using the name of a mark that is well known in the country in which you intend using it, otherwise you could be required to rebrand even if you have secured trademark, domain or company registrations.