For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

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Friday, 19 March 2004

OWN NAME DEFENCE HAS SPHERES OF INFLUENCE

The IPKat is pleased to see some more trade mark cases trickling through the courts. One of the new batch is IBM v Web-Sphere Ltd. IBM registered WebSphere as a CTM for computer software and communications services. Meanwhile, the defendant, a provider of services connected with the internet, changed its name from the name under which it had been incorporated to Web-Sphere. IBM got wind of this and requested that the defendant change its name. The defendant refused and distributed leaflets stating that IBM had made threats towards it
and acted in restraint of trade. It also claimed that the name was not lawfully trade marked by IBM. IBM launched infringement and malicious falsehood proceedings.

The identity of very strong similarity of the two signs, together with the identity of the goods on which they were used meant that infringement was found. Web-Sphere’s attempts to rely on the own-name defence failed because the name-change had only taken place after the IBM had launched its WebSphere product. Thus, there was a strong inference that the defendant’s company name had been chosen to take advantage of IBM’s reputation and goodwill. However, the malicious falsehood claim failed. While the statements made by the defendant in its leaflets were untrue and malicious, it wasn’t possible to establish that any damage had been caused to IBM because the defendant’s leaflets only had a very limited circulation and was amateurish compared to the reach and quality of IBM’s advertising.

The IPKat applauds another sensible decision. It would be ludicrous if a defendant could take advantage of the own name defence by changing its company name to suit the trade mark it wants to imitate after finding out that the claimant’s mark has been registered.

Webs here, here and here
Spheres here, here and here

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