PLEASE NOTE: Information in this article is correct at the time of publication, please contact DFA Law for current advice on older articles.
A recent trade mark case confirms that first impressions matter. It dealt with a dispute over a trade mark application made by a firm which had a similar name to another and which was in a similar line of business. The application was opposed by the other firm, which was the proprietor of existing trade marks.
According to the High Court, the risk of ‘initial interest confusion’ would lead to infringement of the trade mark, despite the fact that a more studied review would enable a person to discriminate between the two firms and their products so that, by the time any purchase was made, there would no longer be confusion in the mind of the purchaser.
The Court refused to accept the application by the firm seeking to register similar trade marks, in spite of the argument that the trade marks were based on the nickname of the firm’s proprietor.
Says Clare Towers, Partner and intellectual property specialist at DFA Law, “The ‘it’s my name’ defence is a surprisingly weak one and this case reinforces the point that before setting up a business under a specific name, it is sensible to check out, at an early stage, the position regarding trade marks you may want to register.”