Why trademarks matter.
When organizations use the same name, what can happen? The following sample cases help to show why trademarks matter.
The same names - a story about magazine titles and trademarks
Along came someone in an organization with an idea for a magazine. Yes, the idea is good. But we need a good title too.
What about calling our magazine "IN TOUCH"
Could there be another magazine with the same name?
Why maybe we should have a magazine, thought someone else. We will get a good title for it.
It will be called "IN TOUCH".
Yet, could there be another magazine with the same name?
Let us issue a magazine, thought someone else. We will think up a good title for it.
We will call it ... IN TOUCH
Yes it is hard to believe, but another magazine with that name was produced. Look at the picture below.
The moral of the story for trademarks.
It can happen that people use the same name. It happened in the cases illustrated above, in the case of three magazines called "IN TOUCH".
This can matter for the several reasons:-
- The goods were similar, being magazines or newsletters.
- The names looked very similar.
- The names sounded identical, phonetically.
Some of the possible consequences of using the same name could include:-
- There may be a breach of the rights of an earlier trademark.
- Consumers could be confused.
- Consumers may think they all come from the same source.
- Advertisers may well advertise in the magazines, but if the owner wants to own a valuable title, the title is not unique.
- It is possible that one party could allege infringement of its name in trade, against the others.
- Because the title is not exclusive, investment in brand building may be wasted.
- A potential purchaser of the magazine publishing rights and title would have to put a lower valuation on the brand, and may be exposed to litigation.
If one was to invest in the name, the investment could be wasted. Why? - because unique and exclusive ownership to the magazine title could not be conveyed to a third party in the event of a disposal.
Why TMs matter
If the original publisher of the magazine had obtained a registered trademark for the magazine title "IN TOUCH", then the following could occur:-
- It would have established its right to the magazine title as being exclusively its own,
- It would hold legal proof of ownership from a certain date,
- Such proof would be capable of being confirmed by the State's trademark regulatory authority,
- The courts would accept the certificate of registration as prima facie evidence of the trademark rights,
- The trademark rights would be capable of ensuring others would have to take account of those rights, and cease to use potentially infringing similar marks on similar goods, or face costly consequences.
On searching, it appears that there is already a trademark registered called "IN TOUCH" for magazines. However, the trademark does not belong to any of the parties using the title. This could be very challenging, and potentially costly, if contested between the parties.
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