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Username: LegalEagle
Date/Time: Fri, January 4, 2002 at 10:39 PM GMT
Browser: Microsoft Internet Explorer V5.5 using Windows NT 5.0
Subject: it depends

Message:
 

 
All trademarks are legally afforded the same protection - are they not?

Not necessarily. This depends on the celebrity test that I've talked about previously - some trademarks are simply more famous than others. This is usually the argument sustained by large companies in domain disputes. Domain/TM-based litigation is quite distinctive in that it involves just the wordmark (text string) which very rarely can be internationally unique.

Courts tend to favour the larger company because they have spent a greater deal of time and money to build up that mark, making it more famous. But they don't always favour the large company especially when the smaller company is well within its rights to use the name. These sorts of cases (David vs. Golliath) can create a lot of public animosity towards the larger company and so it is not uncommon that the bigger company simply purchases the domain name from the smaller company, to mutual benefit.

> Is it not true - using name.class.country.reg would allow each to
> be unique and totally distinctive - as the Law requires trademarks
> to be?

Of course it would. But you try telling the marketing executives of Coca-cola that their new domain names should now be coke.everysinglecountryunderthesun.reg instead of a single coke.com :)

If the printing press was introduced now, would they be allowed to stop what the book was to be called?

Yes they would. If you wrote a book today and called it simply "Coca-Cola" you would definitely have legal action served against you pretty quickly (with The Coca-Cola Company probably claiming passing-off; you're trying to ride on the coat-tails of their TM or using their famous mark to generate more sales).

However, in reference to the inevitable first ammendment right argument, if you were to call the novel "Sweet Success: The Unauthorized Story of how Coca-Cola became the World's Number One Brand" and even used their trademark (in certain circumstances that include news reporting and parodies), then you're using the name in your reporting of fact and are well within your rights to use it.

> The authorities stop even common words.

Yes but only when (for the very last time!) the marks themselves are famous trademarks, a test often only really determined in court.
 


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