Recently, the musician will.i.am and producer/singer Pharrell Williams were heavily engaged in a legal dispute over the latter’s use of the words “I am”.
The name “will.i.am” and the words “I AM” are registered trade marks of will.i.am and his associated companies. Consequently when Pharrell Williams announced the name of his new business venture, “I am OTHER”, will.i.am alleged an infringement of his trademark. The musician claims that the phrase is “confusingly similar” to his registered and common law trademarks and that Pharrell Williams should be prevented from replicating these, by application to court.
In light of this ongoing legal dispute, this article aims to give you an insight into trademarks and the importance of registering your trademark.
What is a trademark?
A trademark is a sign or symbol which distinguishes the goods/services of a particular individual or entity. Many businesses would describe their trademark as their “brand”; something which identifies and distinguishes them in the market. For example, Apple Inc. has one of the most widely recognised trademarks in the world.
A trademark can take many forms and can include words, logos or a combination of both. Nevertheless, unless the trademark is registered with The Intellectual Property Office, there is little to protect it.
How to protect a trade mark
Registration of a trade mark is optional but highly advisable. Registration of the trademark with The Intellectual Property Office confers on the registered proprietor(s) a statutory right to the exclusive use of the trade mark in connection with the goods or services for which it registered.
Registration thereby affords the registered proprietor(s), a right to sue for trademark infringement if there is unauthorised use of an identical or similar mark where such use has caused or is likely to cause confusion to the general public. For example, if Samsung placed an apple on the back of its mobile phones, it is highly likely to cause some confusion amongst consumers as to its origin.
On the contrary, if a trademark is not registered, there is significantly less protection. The only real available option is a common law “passing off” action which is notoriously time-consuming and expensive.
What constitutes a trademark infringement?
Trade mark infringement can occur where a registered trade mark is used by someone other than the registered proprietor and without the proprietor’s consent. This can arise in a number of ways:
- The mark is identical to the registered trademark and is used in relation to goods/services which are similar to those for which the trade mark is registered;
- The mark is similar to the registered trademark and is used in relation to goods/services which are identical or similar to those for which the trade mark is registered;
- The mark is identical or similar to a registered trademark which has a reputation in the UK and the use of the mark takes unfair advantage or is detrimental to the reputation of the trade mark.
What to do in the case of infringement
If the trademark is registered, the registered proprietor(s) may take action if there is a suspected infringement.
If you are aware of a potential trade mark infringement, it is advisable to take the following steps prior to commencing litigation:
1. Record the date and circumstances of the discovery of the potential infringement;
2. Record the name and details of the individual who discovered the potential infringement;
3. Record all details of the individual/entity who are potentially infringing your trade mark. If this is a business, you should note the company name, contact name, address and nature of the business.
4. Obtain (where possible) the mark which is in potential infringement. This could include a photograph or newspaper cutting.
Consider whether there is any infringement of other intellectual property rights, for example, infringement of copyright.
In any event, we strongly suggest that where there is a suspected infringement, you act swiftly in order to seek remedy.
For further information on this topic or to discuss a potential trademark infringement, please contact Adam Krantz on 020 8951 6666.
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