Trade Mark discussion

[cjd]

I'm having a discussion on a fishing forum about trade marks.

What are your opinions of a chap who starts a business making and selling fly rods and fly lines using the name Taylor Made? His name is Jack Taylor.

Additional information is that after the discussion he was able to register the name 'Taylormadeflyfish' in Class 28, sporting goods. The large American golf company TaylorMade that makes golf clubs with carbon fibre shafts - amongst other sporting goods- hold registered marks in the same class. Modern fly rods are made of carbon fibre.

His website is

TaylorMadeFlyFish

www.taylormadeflyfish.com

Do you think that his use of Taylor Made is open to challenge or not? Is it a wise choice of brand?

 

[tony84]

Google The Chicken Big Mac.
I dont know the ins and outs, I read something briefly about it on linkedin.

Basically McDonalds owned the trademark but they had never made a single chicken big mac. Someone wanted to create it and basically took it to court and won, they beat McDonalds.

On the basis that taylor made have never made fishing rods (as far as I am aware) this would be the same situation I think?

www.google.com/search?q=the+chicken+big+mac+trademark

 

[cjd]

The test in English Law is whether consumers might believe the goods come from the TaylorMade company or from a related extension of it. (Man on Clapham omnibus test.)

 

[cjd]

In case others are interested in the Chicken Big Mac case there's a story here

McDonald's loses right to chicken Big Mac name

Other chains will be able to sell poultry-based "Big Macs" following a ruling by the European Court of Justice

www.bbc.co.uk

MacDonalds lost the case but it lost not because they couldn't have protected the name but because they didn't. (They didn't use it.)

Also
"It (the challenger brand) has been embroiled in a seven-year legal battle with the US chain over the right to use brand terms including "Mac"."

This is the main problem for small businesses - even if you might win your case, you'll spend upwards of £100,000 in the high court trying.