Exploring Use of the Same Mark by Multiple Undertakings
Edited by IIanah Simon Fhima
Chapter 7: Same Name, Different Goods – Death of the Principle of Specialty
Ilanah Simon Fhima 1. INTRODUCTION In a nutshell, the principle of specialty dictates that a mark’s scope of protection will be limited to combating later use on identical or similar goods and services. As a corollary of this principle, mark owners cannot prevent later users from using their marks on dissimilar goods and services. Thus, the principle of specialty forces mark owners to ‘share’ the names of their goods and services on certain goods. This chapter will begin by briefly considering the background to the specialty principle, and the effect that this forced sharing of names has. It will go on to argue that specialty has been eroded in two, ultimately distinct, ways: 1. by an expansion of the situations in which the courts hearing both passing off cases and registered trade mark cases are prepared to recognize the existence of actionable confusion and through the adoption of dilution and unfair advantage as independently actionable forms of registered trade mark infringement. 2. However, it will conclude that the principle of specialty never really went away. Although it no longer has the ‘veto power’ it once did over registered and unregistered trade mark infringement actions, specialty remains alive and well, if somewhat reduced, not only in confusion-based infringement, particularly in the field of passing off, but also where one might least expect it – in dilution cases. 101 102 Shared name litigation 2. 2.1 WHAT’S SO SPECIAL ABOUT SPECIALTY? Specialty – A Very Brief History The specialty rule has been influential in many...
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