Protecting a brand and name of a firm, no matter its business sector, is very important to its success and for those in transport it is no different. Adam Bernstein talks to Dai Davis, an expert in the field of trademarks, to look at the issues involved.
The problem of protecting the goodwill of a business from abuse by another, especially where the internet is concerned, is nothing new. Cases involving L’Oreal v eBay, Interflora v M&S and Lush v Amazon have all proved this point. With companies operating with names such as Parkers Executive Coaches, Parkers Executive Chauffeurs and Parkers Travels, it’s easy for the public to become confused when it comes to making bookings.
Now we have another case, albeit involving the kitchens and bathrooms sector – Victoria Plum Ltd (t/a Victoria Plumb) v Victorian Plumbing Ltd – which was ruled on by the High Court in November 2016. Without delving too deeply into the case, it involved the alleged misuse of Victoria Plum’s trademark (and passing off) by a rival, Victorian Plumbing, through the use of Google keywords ‘Victoria’, ‘Victorian’ and ‘Plumbing’. [wlm_nonmember][…]
By subscribing you will benefit from:
- Operator & Supplier Profiles
- Face-to-Face Interviews
- Lastest News
- Test Drives and Reviews
- Legal Updates
- Route Focus
- Industry Insider Opinions
- Passenger Perspective
- Vehicle Launches
- and much more!
What are trademarks?
Trademarks, in their modern form, have been around since the end of the 19th century. The internet has been around only from the end of the 20th century. Politicians have never bothered to make much specific law to regulate the internet, let alone the use of trademarks on it.
Dai Davis, a Solicitor and Chartered Engineer at daidavis.com, says that the starting point for any firm wanting to protect its brand and position is to note that historic trademark laws govern the use of trademarks – even on the internet.
He says: “Trademarks can protect goods, services or both, and they exist in two forms – registered and unregistered. As the name suggests, to obtain a registered trademark requires the applicant to pay a Government agency to grant registration if it’s satisfied that the mark satisfies the criteria.” Dai explains that, in essence, registration can be obtained for anything which is (i) capable of being represented graphically and (ii) capable of “distinguishing goods or services of one undertaking (firm) from those of another undertaking.” This definition covers not just the obvious word, sign or phrase but even such options as colours (say a coach company logo), sounds (e.g. a jingle) and even smells. Registration is not overly expensive; a registered trademark can be obtained in the UK for a few hundred pounds.
Interestingly, an unregistered trademark exists automatically as soon as someone uses it. As Dai points out, even the “look and feel” of a coach livery or an internet site is automatically protected as an unregistered trademark right. In the UK this is protected by the tort (legal wrong) of passing off.
It’s interesting to note that many coach and bus firms draw attention to their trademarks. Pulham & Sons (Coaches) Ltd says: “… No permission is given by Pulhams Coaches in respect of the use of any such trade-marks, product names, brand names, company names, title, copyrights or logos…” Newport Bus says something similar: “The Trademarks, service marks and logos of Newport Transport Limited and others used in this web site are the property of Newport Transport Limited and their respective owners. You have no right to use any such Trademarks…”
Enforcement
When it comes to enforcement, the right to bring an action for passing off exists where the plaintiff – the complaining coach firm – can show that it has sufficient reputation in a mark; that as a result of a misrepresentation by the defendant – the rival accused of misusing (say) the complainant’s livery – a significant proportion of the public has been confused into believing the goods or services of the defendant are connected with those of the plaintiff; and that the plaintiff has suffered loss.
Registration is good
“As might be expected,” says Dai, “unregistered trademark rights are nothing like as strong as registered rights, not least because to show infringement the owner of the unregistered trademark must show actual (or likely) confusion in the minds of customers (or potential customers) by the use of the mark (or in the case of an internet site the ‘look and feel’ of the site) by another company.” In practice, he says this will involve obtaining evidence which is usually unreliable and expensive.
However, what if a rival abuses the “design or get up” of service or website? Well that too is protected. Dai cites the Jif Lemon case: “Here an action was successfully brought under the laws of passing off to restrain use of the well-known yellow lemon-shaped container even though the defendant used the name ‘Real Lemon’.” The solution for the competitor wanting to avoid a passing off action is to provide sufficient information to the customer to avoid confusion.
Limitations of trademarks
Firms can’t just assume that trademarks law will stop all use of similar marks as protection is limited by territory. “When trademarks are used or registered in one territory,” says Dai, “it does not provide any protection in another territory.” For example – the use or registration of a mark in the UK does not provide protection in Jersey and Guernsey which are different countries for these purposes.” That said, some countries group themselves together to provide protection through a single registration – the European Union being an example of this.
Another limitation is that unregistered or registered rights only protect the goods or services for which the mark is used or registered respectively. This means a trademark can be safely used or registered by different businesses simultaneously. A good illustration of this is the word mark “lotus” which in the UK has been successfully registered by many companies.
Consider:
• the shoe company – lotusshoes.co.uk;
• the sports car company – lotuscars.com;
• the software company, now owned by IBM (which is where lotus.com takes you);
• the toilet paper company, recently rebranded to “tork”, that uses lotusprofessional-eu.com; and
• the Algerian food distribution company – lotus-distribution.com.
In addition, the mark is used by numerous Chinese restaurants up and down the country. For the most part, all of these companies can coexist without one treading on another’s toes.
“However, where industries converge life can become difficult,” says Dai. “Originally there were two ‘apples’ – the Beatles record label and the computer company. It wasn’t until the advent of music being sold in digital format that litigation ensued between these companies.”
An online world
Where do firms stand in a global internet age where protection is granted on a country by country basis? What if a business uses a trademark lawfully in one country but then breaches rights elsewhere? Dai says that while there are few specific national laws and no international conventions dealing with the issue, many countries’ legal systems, including those of the UK and the European Union, have tended towards the view that so long as a website is not targeted or directed at the second country, use of the trademark will not be actionable in the second country.
The biggest issue at hand is that trademarks overrule everything else – company names, domain name, Twitter handles, or the account names of social media businesses such as Facebook or LinkedIn. Dai makes this further point: “Just as in a single country there can be several businesses which can use the same business name (as we saw above in the Lotus example), there are often several businesses internationally who can use the same trademark.” So while you might wish to shop online today at “asda.com”, originally your shopping would have been somewhat limited as it would have taken you to the Arizona School of Dental Assisting who were the first to register that web address. Similarly, computer consultancy Boston Business Computing eventually sold “bbc.com” to the British Broadcasting Corporation.
Dissimilar use is allowed
Dai says that in the examples of “asda.com” and “bbc.com” no legal wrong was being committed, “since each entity was entitled to use that trademark in the limited manner of its use, it was simply a case of first come, first served.” There could be no cause for complaint provided the dental assistants had not begun to sell groceries in the UK. Likewise, Boston Business Computing was entitled to use the domain “bbc.com” since they were not competitors of the British Broadcasting Corporation. Because of this they can continue to use their present web domain name: “bosbbc.com”.
Save on enforcement cost
The organisations behind the common internet domain suffixes (such as VeriSign in the case of the “.com” domain or Nominet in the case of the “.co.uk” domain) have mandatory dispute resolution procedures in the case of alleged trademark infringement. Those procedures bind companies who have those domain name addresses and in any event are invariably cheaper to invoke than national law. At the end of the day, it is still open for a business which owns a trademark to use the national courts to prevent the misuse of a trademark on the internet.
There have been many examples of where a trademark has been used incorrectly on social media by a company other than the registered owner. For the most part, these are resolved by the social media company taking action to prevent that infringement since that use is usually in breach of the social media companies own terms of use. An exception can be where the social media company is itself commercialising the use of the trademark – and that will usually entail expensive litigation.
To conclude
The lesson from all of this is that firms should proactively register their trademarks, protect those marks appropriately, and save on cost by pursuing only those that impinge on their line of business. Before throwing money at expensive and potentially PR-damaging cases, good advice should be sought.[/wlm_ismember]