So, Are You Infringing A Trade Mark?
Here’s an issue that recently came up with a client: when is it OK to use another company’s registered trade mark?
Now, the law can be complicated, and this article isn’t the place to give extended legal advice. Please get in touch if you need that. But here are a few broad principles that apply.
In general, you’re free to use a trademarked expression when talking about a company, or when comparing products. You just have to take care not to imply that it’s YOUR trademark, or that there’s a business relationship between you and the owner of the other mark.
That’s because the trade mark is granted to protect the integrity of the brand, not to prevent the use of the word in general.
The Apple Records Logo
This next one may surprise you.
It’s also possible to use an existing trade mark for your own brand, so long as it’s not for the same (or a closely-related) goods or services.
One classic example is Apple Computers versus Apple Records. Both feature ‘Apple’, but when first registered they were in totally different industry sectors.
Mind you, well-known brands have special protections under the Trade Marks Act 1995, so best to talk to us first rather than take a chance.
What About Overseas?
Oh, and another thought: those principles are broadly true in most countries.
One obvious example is the US, where you can use a trademark belonging to another person or company if you use the mark for informational purposes, or to make an honest comparison between products. Put another way, talking about someone else’s trademark doesn’t necessarily qualify as an infringement, so long as you aren’t using it as a trademark yourself.
See 15 U.S.C. § 1115(b)(4) for full details.
What Should I Do Next?
It is always prudent to talk to a registered trade mark attorney before investing in new branding.
So if you do have any questions, please feel free to get in touch. We’re always happy to have a chat.