Illcit Use or Fair Dealing - Getting the Right Protection for Your Mark

When you consider registering your trade mark, sometimes there’s no such thing as too much protection. This was a lesson learned by Illicit Clothing earlier this year when, despite their use and registration of the brand ILLICIT for 12 years in relation to clothing and tattooing services, they discovered Demon Drinks was launching a cola called ILLICIT.

A comparison of the marks in use is shown below (Illicit Clothing on the left, Illicit Cola on the right):

Illicit Clothing told a news channel that they’ve received calls from a number of confused customers and would take the matter to court if they had the money. It’s true, enforcing your rights can cost a lot - so what are the lessons to be learned?

1. Registering your trade mark means it can be easier to enforce your rights, rather than having to go through the greater expense of having to rely on fair trading legislation or common law rights (both requiring proof of your reputation and establishing that use by others is likely to deceive or confuse consumers).

2. “Future proofing” your brand by applying for registration in relation to all goods and/or services of interest is much cheaper (in NZ as little as NZ$100 for ten years) than the cost of bringing a legal action - most IP offices refuse other traders’ applications for the same or similar mark in relation to confusingly similar goods or services.

3. Regularly monitor the Internet and the trade marks register in your countries of interest to ensure that no other trader is creeping into your market. Acting early to prevent another trader getting traction in a confusingly similar brand can mean that you are more likely to maintain your rights.

4. Register your stylised mark as well as your word mark - when marks are compared to determine likelihood of confusion, consideration is given to the look, sound and idea of the marks. In Illicit Clothing’s case, it is the combination of identical word and similar font being used by Demon Drinks that is adding to consumer confusion.

5. You may have copyright in images used to promote your brand as well as trade mark rights. As there is no official system of copyright registration other than in the U.S. it can be easier (and therefore cheaper) to enforce your images as a registered mark. Registration also clearly establishes the date from which your rights commence, and can be renewed indefinitely (unlike copyright which in most countries expires 50 years after the death of the author).

The above comments are based on the New Zealand legal system which may differ to other countries.