Caution Needed Over Trademark Use – Or It Might Be a Case of ‘Hard Cheese’
Date Posted: 08 January 2009
Liverpool businesses need to beware, following a recent decision concerning cheese.
The claimant, Arla, produces a soft cheese particularly well known in the Arabic-speaking EU community called “Puck”. Arla had registered the trade mark Puck in relation to Class 29 goods – milk and milk products
Another Dutch dairy manufacturer, Th Vergeer en Zonen, produced cheese called “Cheez’Pucks” – in the shape of ice hockey pucks. Vergeer registered the domain name www.cheezpucks.nl/ to market these products.
Vergeer claimed that the name puck was a generic term that was used to describe the appearance of the cheese. However, the judges ruled that puck is only descriptive of goods and services relating to ice hockey, not cheese.
Vergeer was ordered to transfer the domain name to Arla, who are also entitled to 15,000 euros in compensation.
The case should serve as a warning. Whenever starting a new venture, launching a new product, or setting up a new business, it is a good idea to seek professional advice on your chosen name. For instance, would you know that the word “puk”, although spelt differently from puck, would still be held to be infringing in a case for trade mark infringement?
We would also advise you to go that one step further and make an application to register the name where appropriate.
A registered trade mark will add value to your brand, and give you the control you need to ensure your name is only linked with quality.
Without registered rights, it can be very hard to prove you have any enforceable rights in your chosen name.
At the same time, it may be that you need to register a domain name for a new venture, or perhaps someone has registered a domain in bad faith which infringes a trade mark owned by you.
Ben Prangell is a trade mark specialist at Shipley Solicitors, in Liverpool