Perhaps one of the more controversial cases is the fight over monopoly rights on common place terms.
A recent case has arisen in France over NGO’s mark for the word ‘planet’. It is commonly known and noted throughout UK laws that a common place word cannot be trade marked. This is because it prevents any one from using the words within the given classes. However, French laws has bypassed this with entertainment company, Canal Plus’ successful trade marking of the term- Planet.
As noted in the above case, it has proved a difficultly for others using the common place term. Other NGO’s and organisations have been issued letters from Canal Plus ‘denying the right’ to use the mark.
In response to this, companies are faced with the difficulty of having to reach an agreement with the French NGO. If an amicable agreement is not reached, then legal action will be taken. The arguments set out with Canal Plus is for their strong reputability and distinctive character in the television market across the EU and UK.
There is a chance that within an amicable decision, the parties could agree to sign a co-existence agreement or even a licence. This is dependent on the decision by Canal Plus and whether further action is taken.
The above not only highlights the difficulty faced when a common place term is trade marked, but also the power of trade marking and its ability to prevent marks that are identical or remotely similar from being used.
If you would like further information concerning the above or would like more information on filing a trade mark, please do not hesitate to contact the Trademarkroom team today.