What's the legality around naming businesses with similar names to established ones

Gerrup Outta Dat!

For example, what if my name were Mr McDonnell and I wanted to open a fast food business called McDonnell's and have a big yellow M with sharp edges instead of round, smooth ones. Would that be allowed?

Or what if I wanted to open a chain of supermarkets called SuperbValu?

What draws the line between trademark infringement and a new name?

brian_t

It's not called plagiarism - it's trademark infringement.

vicwatson

Call Pat McDonagh and ask him (Supermacs)

drunkmonkey

You should ask the owner of this place..



If it's the same type of business you'd be in hot water, I know a chap that basically copied a logo of a car manufacturer, he got a letter about it but they compensated him for having to rebrand the vehicles and his logo etc.

If you think your going to upset an established business i'd come up with a different name.

GM228

Gerrup Outta Dat! wrote: »

What draws the line between trademark infringement and a new name?

Once the trademark is similar or perhaps more importantly likely to be mistaken then there is an infringement.

See S14 of the Trade Marks Act 1996 (as amended by the Patents (Amendment) Act 2006):-

14.—(1) A person shall infringe a registered trade mark if that person uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered.

(2) A person shall infringe a registered trade mark if that person uses in the course of trade a sign where because—
(a) the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or
(b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association of the sign with the trade mark.

(3) A person shall infringe a registered trade mark if that person uses in the course of trade in relation to goods or services a sign which is identical with or similar to the trade mark where the trade mark has a reputation in the State and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the reputation of the trade mark.

(4) For the purposes of this section, use of a sign shall include, in particular—
(a) affixing it to goods or the packaging thereof;
(b) offering or exposing goods for sale, putting them on the market or stocking them for those purposes under the sign, or offering or supplying services under the sign;
(c) importing or exporting goods under the sign; or
(d) using the sign on business papers or in advertising.

(5) A person who applies a registered trade mark to material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services shall be treated as a party to any use of the material which infringes the registered trade mark if, when that person applied the mark, that person knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee of the registered trade mark.

(6) Nothing in the preceding provisions of this section shall be construed as preventing the use of a registered trade mark by any person for the purpose of identifying goods or services as those of the proprietor or licensee of the registered trade mark; but any such use, otherwise than in accordance with honest practices in industrial or commercial matters, shall be treated as infringing the registered trade mark if the use without due cause takes unfair advantage of, or is detrimental to, the distinctive character or reputation of the trade mark.

GerardKeating

Gerrup Outta Dat! wrote: »

For example, what if my name were Mr McDonnell and I wanted to open a fast food business called McDonnell's and have a big yellow M with sharp edges instead of round, smooth ones. Would that be allowed?

Or what if I wanted to open a chain of supermarkets called SuperbValu?

What draws the line between trademark infringement and a new name?

Mostly how deep the pockets of either side...

Peregrinus

You can always carry on business under your own name, so if your name happens to be Ronald McDonald . . .

But, even if that is your name, if you adopt the logo, design, etc of a competitor, or anything confusingly similar to it, they'll chase you either for trademark infringement or for "passing off". It doesn't matter whether you do so with the intention of capitalising on your competitor's reputation and goodwill; the likely effect of your behaviour, rather than the intention behind it, is what matters.

L1011

Few noteable cases in Ireland on this topic; well the similar logo bit.

There's the Jacobs / United Biscuits case which it appears is now too old for me to find pictures of the packaging - basically United Biscuits fig rolls were deemed to have overly similar packaging; and the McCambridges/Brennans one which is recent enough - https://www.irishtimes.com/news/crime-and-law/courts/bread-companies-settle-dispute-over-packaging-1.1811632

Robbo

Gerrup Outta Dat! wrote: »

For example, what if my name were Mr McDonnell and I wanted to open a fast food business called McDonnell's and have a big yellow M with sharp edges instead of round, smooth ones. Would that be allowed?

Or what if I wanted to open a chain of supermarkets called SuperbValu?

What draws the line between trademark infringement and a new name?

Sounds like you might have some heavy metal enemies with that style of lettering...

L1011 wrote: »

Few noteable cases in Ireland on this topic; well the similar logo bit.

There's the Jacobs / United Biscuits case which it appears is now too old for me to find pictures of the packaging - basically United Biscuits fig rolls were deemed to have overly similar packaging; and the McCambridges/Brennans one which is recent enough - https://www.irishtimes.com/news/crime-and-law/courts/bread-companies-settle-dispute-over-packaging-1.1811632

The pictures of the Jacobs case are actually appended to the judgment.

vicwatson wrote: »

Call Pat McDonagh and ask him (Supermacs)

Trademark wars, personal injury cases and hinting about opening in Australia. The Holy Trinity of Supermac's publicity strategies.

ambro25

Gerrup Outta Dat! wrote: »

What draws the line between trademark infringement and a new name?

Trademark infringement is contingent upon the trademark (of the other business) being registered in the first place; moreover registered with effect in the country in which you propose to open your business (Republic of Ireland, I presume? so either an Irish Registered Trade Mark, or a European Registered Trade Mark).

If the other business' mark is registered e.g. in Japan, and/or China, and/or the US, but not in the RoI or across the EU (as an EUTM), then there are no exclusive rights in Ireland which can be enforced through Section 14 TMA above.

'Likelihood of confusion' on the part of the public (your customers, potential and actual in context), is what draws the line between infringement of an RTM and not.

If the sign of the other business is not registered, then you're 'only' looking at passing-off.

Going back to my example above, if the other business' mark is registered overseas and not in the RoI or across the EU, but that other business has been trading and continues to trade in the RoI, then passing-off still represents a risk.

(i) misrepresentation (the element of similarity between the signs), (ii) goodwill of the other business under their get-up and (iii) damage (or its likelihood) to that goodwill from your use of your sign, are what draw the line between passing off and not (all 3 conditions are cumulative).

RTM infringement and passing off are not mutually exclusive, you could perfectly well find yourself facing both heads of claim, given the right set of facts/circumstances.

Do your homework first, and do it well. A forced rebrand within weeks of a new venture launch can be expensive (-enough, to kill the venture), and the above anecdote of a rights owner paying the infringer to rebrand is more like the exception which confirms the rule (usually the rights owner would ask for its costs of pre-action enforcement instead).

Colonel Claptrap

They made a movie about this with Eddie Murphy and Darth Vader.

ezra_

Wasn't there a case involving C&A (trading in the UK) and a C&A shop in Waterford, which found that even though C&A (UK) wasn't trading in Ireland, it still had sufficient goodwill here that the Waterford shop was passing off? THink it was an old one (60s/70s?)

There's a restaurant chain in the US called Burgatory. Recently a restaurant opened in Galway called The Burgatory. I wonder if anything could come of that? Then again, we had Eddie Rockets blatantly rip off Johnny Rockets and nothing came of it.

Mr. Incognito

There is nothing to stop you registering the same business same.

But you can be sued in Tort for passing off or trademark infringment.

L1011

Robbo wrote: »

The pictures of the Jacobs case are actually appended to the judgment.

Interestingly the infringing Fig Rolls one is broken (for me) and the non-infringing Cream Crackers one works.

Karsini wrote: »

There's a restaurant chain in the US called Burgatory. Recently a restaurant opened in Galway called The Burgatory. I wonder if anything could come of that? Then again, we had Eddie Rockets blatantly rip off Johnny Rockets and nothing came of it.

Ever more confusingly, there's an effectively identical and similarly aged Ed's Diner chain in the UK. And there was a tiny amount of Eddie Rockets branches in the UK at one stage.

Gerrup Outta Dat!

Are state agencies trademarked?

What if I wore a fake uniform with GARAD (deliberate misspelling) on in for Halowe’en? Would I be charged with impersonation?

What if I wore a fake uniform with POLICE on it with the intention of tricking tourists who don’t know what a Garda is? The act specifically mentions impersonation of a Garda and nothing about “Police”.

Hypothetically of course.

TheIrishGrover

This isn't dodgy at all........

Peregrinus

Gerrup Outta Dat! wrote: »

Are state agencies trademarked?

What if I wore a fake uniform with GARAD (deliberate misspelling) on in for Halowe’en? Would I be charged with impersonation?

What if I wore a fake uniform with POLICE on it with the intention of tricking tourists who don’t know what a Garda is? The act specifically mentions impersonation of a Garda and nothing about “Police”.

Those tactics are absolutely guaranteed to work and carry no legal risk whatsoever. You should definitely do those things. Nothing can possibly go wrong.

Fred Swanson

This post has been deleted.

Victor

Gerrup Outta Dat! wrote: »

Are state agencies trademarked?

As such, I don't know, but there are other protections.

What if I wore a fake uniform with GARAD (deliberate misspelling) on in for Halowe’en? Would I be charged with impersonation?

Potentially. "Gadaí" would be much more interesting.

What if I wore a fake uniform with POLICE on it with the intention of tricking tourists who don’t know what a Garda is? The act specifically mentions impersonation of a Garda and nothing about “Police”.

Note that some Garda uniforms do use the word "Police". Regardless, I think you would be in trouble - there are port and airport police.

Esel

ADRAG maybe?