Legal Updates

Not any use of a trademark of another is infringement of such trademark

August 29, 2021

A trademark owner comprised of the phrase "messages from the universe", the name of the owner of the mark and a graphic drawing, demanded that a competing business owner cease using the phrase as the title of a weekly column in a newspaper because he is usurping her reputation.

The Court rejected the motion because the phrase is not distinctively associated with the trademark owner's services and its use does not mislead consumers. Using the reputation of another for a business purpose is a tort of passing-off. The test for infringement of a registered trademark in relation to goods of the same type, is the test of deceptive similarity. In order to examine the possibility of deception of the consumers, three main tests are utilized: the test of appearance and sound, the test of the type of goods and the circle of customers, and the test of the other circumstances of the case. The tests are the same when dealing with the tort of passing off. However, while in trademark infringement only the similarity between the infringing mark and the registered mark is examined, in the case of the tort of passing off the test is broader. Here, the phrase is a descriptive and perhaps even a generic expression, especially when it comes to the occupation of the trademark owner and the competitor. In addition, the competing business owner has used only the verbal element of the registered mark which, by itself, is not entitled to protection. Also, the mark did not acquire a unique reputation and there is not apprehension of deception by the competitor's use of the phrase. Thus, it cannot be held that the competing business owner infringed the trademark or committed the tort of passing off.