FW\'s IP experts answer the FT Q&A on what your position is if you are contacted by someone who says you are using their trademark

March 25, 2013

 

Q) We have run a clothes retailing business with a  brand around my dog, who is named after a popular TV cartoon character.  We have not had any issues before, but we have been sent a letter from the studio that owns rights to the cartoon, saying that we have breached copyright.  I can’t afford to fight such a big company and I’m worried  we will go bankrupt having to change signage and logos.
This appears more likely to be a trademark issue: trademarks protect names and logos, whereas copyright relates to literary and artistic works. If the studio owns a trademark for the canine character’s name which is identical to the one you are using, you may have a problem. If there are differences when compared against the studio’s trademark, or if the studio has trademark protection for broadcasting services, the studio will have to show that there is a likelihood of confusion between the brands. 
The use of one’s name in good faith is a defence to infringement, but this does not extend to the name of your canine companion! 
The studio could also claim that you are “passing off” the goodwill they have generated. In relation to copyright, the studio would be successful if your logo had copied a “substantial part” of their work. To avoid a costly legal battle, you need to respond creatively. If you alter the branding to avoid using the dog’s name, this may be a suitable option. 
Simon Bennett is a partner and Duncan Jones is a solicitor at Fox Williams, a law firm

This Q&A was prepared for and first featured in the Financial Times

Q) We have run a clothes retailing business with a brand around my dog, who is named after a popular TV cartoon character. We have not had any issues before, but we have been sent a letter from the studio that owns rights to the cartoon, saying that we have breached copyright. I can’t afford to fight such a big company and I’m worried we will go bankrupt having to change signage and logos.

 


 

 

A) This appears more likely to be a trademark issue: trademarks protect names and logos, whereas copyright relates to literary and artistic works. If the studio owns a trademark for the canine character’s name which is identical to the one you are using, you may have a problem. If there are differences when compared against the studio’s trademark, or if the studio has trademark protection for broadcasting services, the studio will have to show that there is a likelihood of confusion between the brands.

The use of one’s name in good faith is a defence to infringement, but this does not extend to the name of your canine companion!

The studio could also claim that you are “passing off” the goodwill they have generated. In relation to copyright, the studio would be successful if your logo had copied a “substantial part” of their work. To avoid a costly legal battle, you need to respond creatively. If you alter the branding to avoid using the dog’s name, this may be a suitable option.

 


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