Wednesday, 19 August 2009

Distinctive IP - AN UNWANTED ALLIANCE

I just discovered Hans's articles in the NoseWeek... buy it - great magazine!

Issue 15, 19 August 2009

AN UNWANTED ALLIANCE

Alliance Property Group’s recent failure to stop fellow property company Alliance Group from trading under the name Alliance should come as no surprise. Although it took the court a full 57 pages to do so, all it really had to say was that the name Alliance is inherently weak, there are loads of businesses out there called Alliance, and Alliance Property Group waited far too long before it tried to assert itself. So there was no way it could claim exclusivity. Not even in its own space - property (property / space, they say it’s a gift!). And just to remind you why Distinctive IP is your preferred source of IP law (and to give this some semblance of respectability), how about a short quote from the judgment, which itself comes from an earlier English judgment: ‘The plaintiff which uses descriptive words in its trade name will find that quite small differences in a competitor’s trade name will render the latter immune from action.’ Right!

What this case does do is reinforce what that grey-suited, grey-haired and occasionally grey-mattered attorney has been droning on about for years - you’re either distinct or extinct! Yes, I know that smooth-talking, Gap-wearing, Jack Daniels-sipping, Mini Cooper Coupe-driving ponytail from the advertising agency with the really deep name (no of course I’m not jealous!) has been telling you that a descriptive mark’s great because it tells people what you do, and it makes your initial marketing so much easier and cheaper, but you know what - you’ll forever be in an alliance with your competitors. Instead of standing out from the crowd!

Yes you may eventually get a trade mark registration when you’ve been in business for years, but even then you’ll find it difficult to enforce your rights. Consider this - our national carrier may possibly have a registration for South African Airways, but it might still struggle to stop someone else from taking to the skies as Southern Africa Airlines. My favourite local airline on the other hand, Kulula, just can’t wait for someone to try it on as Kolola. Or Mooloola! Or Luluka!

So remember boys and girls, made-up words like Kodak are good, as are dictionary words used out of context like Google for search thingies (yes I know it comes from the maths term ‘googol’, but ‘google’ does have a meaning, it means to deliver a googly, which is something you do on a cricket pitch not in a maternity ward!). Ordinary words used descriptively are poor, however, as are clich├ęd words like Perfection, geographical names and surnames. If that’s too much to retain, just remember this - Mortgage SA Bad, Ooba Good. The Mosabob rule.


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