Trade Mark Law and Sharing Names

Trade Mark Law and Sharing Names

Exploring Use of the Same Mark by Multiple Undertakings

Edited by IIanah Simon Fhima

There are a number of points throughout the trade mark system where multiple undertakings share the same name, either unwillingly, or by consent. In this timely book, expert contributors address this controversial issue and identify the various points at which names are shared. This unique book uses both historical and interdisciplinary perspectives, as well as more traditional legal methodology, to examine the practical and theoretical implications of such name sharing for the parties involved. It analyses what can be learned from the sharing process about the nature of the trade mark system and the interests which it protects. General themes relating to the nature and purpose of trade mark law are also discussed.

Chapter 1: Introduction

Ilanah Simon Fhima

Subjects: law - academic, intellectual property law


Ilanah Simon Fhima 1. WHY A BOOK ON SHARING NAMES? In using the term ‘sharing names’, this book refers to situations where trade mark owners (and, in some circumstances, those who hold rights protected by the law of passing off) find themselves in a situation where another trader is concurrently using a mark which is identical or very similar to that held by the trade mark owner. This can happen voluntarily, for example, when a trade mark owner decides to license his mark to another trader in respect of part of his business but continues to use the mark for the rest of his business. It may also happen involuntarily, for example, when another trader starts using a very similar mark without the owner’s authorization in an infringement-type situation. The sharing of names may seem like a rather abstract theme for a book. However, it is hoped that this volume will persuade readers that this subject is of great practical importance. The range of topics covered in the chapters shows that it has a place in every aspect of trade mark law, from registrability to infringement to transactions involving trade marks. In all of these areas, traders are either asking the authorities to give legal recognition to the ways in which they are voluntarily sharing their trade marks, or to stop other traders from sharing their marks without their authorization. Perhaps more importantly, the ability of traders to share names and the traders’ inability to stop others from sharing their...