It’s not fair! – Unfair advantage and Google TM infringement
It’s not fair! – Unfair advantage and Google TM infringement
Published: 23.05.12 at 16:22
The owner of a cab company with a near identical name to that of the world's most famous internet search engine claims: "I have not used web logo", and believes that he has not broken any laws - reported here in the Croydon Guardian.
It is probably safe to say that he didn't seek any legal advice prior to naming his cab firm (or merely chose to ignore any advice that he did receive).
The sign reproduces Google's trade mark using the same colours and a similar font and is almost identical save for one notable exception; an additional 'o'!
When you register a trade mark you register it for certain classes of goods or services. A registered trade mark provides an exclusive right to use that mark in relation to those goods or services. It is unlikely that Google has registered its trade mark in a class akin to taxi services.
However, it is also highly unlikely that this will absolve the cabby in this case from any potential liability. This is because it is also an infringement to take 'unfair advantage' of a registered trade mark with a significant reputation.
The proprietor of a registered trade mark can prevent others from taking unfair advantage of its mark even where the latter's goods or services are dissimilar to those for which the mark is registered.
The current keynote case on unfair advantage is L'Oreal v Bellure. The following excerpt comes from the judgment in this case:
"[t]he advantage arising from the use by a third party of a sign similar to a mark with a reputation is an advantage taken unfairly...where that party seeks by that use to ride on the coat-tails of the mark with a reputation in order to benefit from the power of attraction, the reputation and the prestige of that mark and to exploit, without paying any financial compensation, the marketing effort expended by the proprietor of the mark in order to create and maintain the mark's image."
The question of whether there has been an infringement is essentially twofold:
- 1. Does the Google trade mark have a significant reputation among the public at large?; and
- 2. Is the owner of the cab company in this case seeking to ride on the coat tails of said trade mark in order to benefit from its power of attraction, reputation and prestige?
We'll let you decide...
Article by Joe Walsh
Photograph (some rights reserved) by keso
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