WatchPro recently reported on Jaguar’s claim that Christopher Ward’s D-Type watch infringed the famed car manufacturer’s trademark.
The general rule is that trademark infringement only exists when there is a likelihood of confusion between goods and services of two parties, writes Andrei Mincov, founder & CEO of Trademark Factory.
The Trademarks Office and the courts are usually of the position that as long as the goods and services are unrelated, two parties can get away with using (and even registering) very similar (and often identical) trademarks.
In other words, trademarks are not designed to give an absolute monopoly over a name, phrase or an image. They are designed to give a monopoly over a mental link between such names, phrases, and images AND a specific products and services for which the trademark owner wishes to be known.
This rule is sound.
It allows unrelated businesses to coexist under similar or even identical brands—as long as the public is not confused into believing that such unrelated goods and services come from the same source.
Where it gets interesting is when one company is deliberately trying to create an association in the public’s mind with some other brand—even if their products and services are totally different.
As we see today, many businesses are trying to take advantage of the system by launching products in completely new niches under well-known brands.
We have seen:
Now we have cars and watches.
My take on this is that intent should be one of the main factors in determining whether the use of someone else’s brands for unrelated goods and services should be considered trademark infringement.
It’s not just about whether the public is actually mislead into believing that the second company’s products and services come from the same source as products and services of the first company.
It should also be about whether the second company intentionally attempted to take a free ride on the popularity of the first company’s brand.
If the goods and services are indeed unrelated, there should not be any reason for you to pay homage to the well-known brand, should there?
Going back to Jaguar’s dispute with Christopher Ward, when the watch manufacturer in their catalog claims that the watch has an “original D-Type speedometer inspired dial,” it proves that the brand was not chosen by coincidence. It was anything but random.
By drawing the parallel between the brands, the watch manufacturer should be considered to have waived the right to use the argument that the goods are not related.
They BECOME related by virtue of you creating that mental link between your goods and services and those of someone else.
On a practical level, this dispute will probably quietly end with a settlement in the form of a trademark license.
But it would be great if the trademark law was amended to address this issue.