Software Name

[VillaLion]

Hi,

Apologies if this is a very basic question, but I just need to clarify something before I continue any further.

I have started a new company and am selling a piece of software which is an add-on, or aid, to another piece of software. Now my piece of software includes the name of the other software for which it is an add on of.

Is this legal or would I have to change the name of my piece of software?

Thanks in advance for your help.

[markmclaren]

I'm no lawyer but I suspect it depends how you word it. You may also need to add a trade-mark symbol.
So this would be OK:
Supa Fast Type add-in for Microsoft (TM) Word (TM)

But this wouldn't:
Microsoft Word Supa Fast Type

[obscure]

You need to get proper legal advise from an experienced IP lawyer. You can find a list of them on my site at http://www.obscure.co.uk/directory-legal/ - my site is video game specific but they all do intellectual property as well as game specific stuff.

I'm not a lawyer but I am pretty sure the answer would be no if you are talking about having a product which adds features to something like Microsoft's Excell and you were to name your product "Excell Extender" because Excell is a trademark of MS and your use of it for a software product would amount to trademark infringement or passing off.

[SolsburyHill]

Its hard to advise without the specifics, and you should get expert advise to be sure, but I believe the answer is no.

For example Microsoft would have a valid claim for trade mark infringement if you used the brand MICROSOFT ZENO. Even though ZENO was your brand, people could assume you are connected to Microsft or indeed this was a sub-brand of Microsoft. Simply adding matter to a registered trade mark is no defence to infringement unless the new mark conjures up a new idea. Basically you should not use another traders brand in isolation or as part of your brand in a branding sense.

You can use another traders mark to identify his/her products or possibly to say it fits their product or can be used in conjunction with their product so long as that use is in 'accordance honest principles in commercial and industrial matters', basically you not trading off their goodwill and are simply using the mark descriptively. However such use should not be as apart of a brand name and simply as part of the description of your product. I suggest you choose another mark.

A list of Trade Mark Attorneys who can advise in more depth and discuss the specifics of your problem can be found here:-

http://www.itma.org.uk/links