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Why TWITTER Application For Drinks Could Fail

April 30, 2009

Continental Wine & Food Limited has applied to register the mark TWITTER for beer, wine and other alcoholic drinks;  Can they do this?

As a general rule trade marks are granted for particular activities – that is, classes. So you indicate which business categories you want to use your brand for when applying for your trade mark.  This limits the scope of your rights in that name.  There are 45 classes of goods and services, and trade mark filing fees being expensive, it would cost you a lot to include all 45 classes.  Anyway, even if you wanted to do so, you would have to have a genuine intention to use the mark on all the classes, and as there are thousands of descriptions within each class you still may not succeed in locking others out entirely from using the same name as yours for their non competing business.

Once you are granted the trade mark you get exclusive rights to use the name or logo in relation to those business categories you included in your application form.  You also get some level of protection over overlapping areas, but this is a grey area, and sometimes involves litigation to determine.  So it is much cheaper, if in doubt, to include the class, to ensure you obtain protection in all the classes that are appropriate to your business.  Otherwise others might register to use the same or a similar name in other areas of activity, locking you out from extending your brand to those areas in future.

That is how it happens that the same name is registered by several different non competing businesses. For example, POLO is a registered trademark belonging to three businesses operating in different sectors – cars, confectionery, and clothes.  Another famous example of a registration shared by two famous brands is APPLE.  They are both registered in class 9 but as technology and music have converged their co-existence has been problematic and caused disputes.

In practice an effective way of drawing inspiration for names is to look at the trade mark registers and choose names you like which are registered for totally non competing business categories.  This is what happened in Exxon Corp v Exxon Consultants International Ltd (1982).  Exxon tried, but failed to argue that Exxon Consultants should not be allowed to use the name EXXON for insurance services.  Their argument was that they had paid substantial amounts of money to have the name developed.  Therefore they claimed copyright in the name.  The Court disagreed.  It said that it is not possible to have copyright in a name.  There would be too much overlap with trade marks if people were able to claim copyright in a name.

So, the only way to own rights over a name is through trade marks. On this basis you might think that TWITTER for drinks should get through.  However, different rules apply for well known marks.  Have you noticed how only COCA COLA uses the name COCA COLA, or MICROSOFT uses the name MICROSOFT?
It will be interesting to watch this application to see whether TWITTER opposes it.  A possible ground of objection is that the applicant is using the sign TWITTER without due cause and is taking unfair advantage of it, or that its use is detrimental to, the distinctive character or repute of its trade mark.