Legal Question in Intellectual Property in United Kingdom
Prior useage of phrase - We used phrase, company later registered phrase as Trad
In the 1930's a phrase was used as the title of a song,
(might not be the original source).
Since then the phrase has been widely used by many parties in many contexts,
currently on over 2680 websites.
Approx. 20 years ago, the company used the phrase in a ''jingle'' advertising alcohol.
In 1998 we started using this phrase on our Outdoor Pursuits website
In 2001 a UK law firm registered the phrase as a UK Trademark.
Law firm now claims we are contravening UK Copyright Law, infringing their client's intellectual property rights.
''The registered trade mark deleted is extremely widely recognised and is exclusively associated with our client.
Your continued use of the mark takes unfair advantage of,
and is detrimental to,
the distinctive character and repute of that mark,
making you liable for trade mark infringement.''
...
''Your use of the slogan is likely to lead consumers into believing,
mistakenly,
that your business is connected with, authorised or endorsed by our client.
Such confusion is likely to damage our client's valuable reputation and goodwill.
Your use of the slogan therefore amounts to passing off,
entitling our client to take action against you.''
Are they entitled claim this ?
1 Answer from Attorneys
Re: Prior useage of phrase - We used phrase, company later registered phrase as
From the position outlined it appears that what is being alleged against you are two separate matters first, trade mark infringement and second passing off.
It is an infringement for a person to use in the course of a trade a sign which is identical to a registered trade mark in relation to the goods or services which are identical with the goods or services for which the trade mark is registered. The two relevant questions therefore are your signs used in the course of a trade? and if so it is identical or closely similar to the registered trade mark. It is therefore necessary to know what classes of goods or services the mark is registered in and whether these categories cover the same use.
"Passing Off" is a common law remedy that a claimant can use if it is for some reason unable to satisfy the statutory requirements for trade mark infringement e.g. where the mark is being used for goods or services entirely dissimilar from the categories that the trade mark owner has registered in.
The Claimant must show that he owns some goodwill in the mark, there has been misrepresentation (either intentional or unintentional by your use of the mark) and that the Claimant has thereby suffered some consequent damage.
If the Claimant can show either an infringement of the trade mark or claim for passing off they may be entitled to an injunction requiring you to cease use of the mark but to provide a definitive answer your lawyer would have to carry out detailed searches and investigations about the use, presentation and goodwill accruing in the mark or marks.
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