Same Name, Different Goods - Death of the Principle of Specialty

TRADE MARK LAW AND SHARING NAMES: EXPLORING USE OF THE SAME MARK BY MULTIPLE UNDERTAKINGS, I. Simon Fhima, ed., Chapter 7, Edward Elgar, 2009

Posted: 22 Apr 2009

See all articles by Ilanah Simon Fhima

Ilanah Simon Fhima

Institute of Brand and Innovation Law, Unversity College London

Date Written: April 22, 2009

Abstract

In a nutshell, the principle of specialty dictates that a mark’s scope of protection will be limited to combating later use on identical or similar goods and services. As a corollary of this principle, mark owners cannot prevent later users from using their marks on dissimilar goods and services. Thus, the principle of specialty forces mark owners to ‘share’ the names of their goods and services on certain goods.

This chapter begins by briefly considering the background to the specialty principle, and the effect that this forced sharing of names has. It goes on to argue that specialty has been eroded in two, ultimately distinct, ways:

i. by an expansion of the situations in which the courts hearing both passing off cases and registered trade mark cases are prepared to recognise the existence of actionable confusion and ii. through the adoption of dilution and unfair advantage as independently actionable forms of registered trade mark infringement.

However, it concludes that the principle of specialty never really went away. Although it no longer has the ‘veto power’ it once did over registered and unregistered trade mark infringement actions, specialty remains alive and well, if somewhat reduced, not only in confusion-based infringement, particularly in the field of passing off, but also where one might least expect it - in dilution cases.

Keywords: trademark, trade mark, dilution, confusion, infringement, specialty, Europe, UK, US

JEL Classification: O34, K39

Suggested Citation

Simon, Ilanah, Same Name, Different Goods - Death of the Principle of Specialty (April 22, 2009). TRADE MARK LAW AND SHARING NAMES: EXPLORING USE OF THE SAME MARK BY MULTIPLE UNDERTAKINGS, I. Simon Fhima, ed., Chapter 7, Edward Elgar, 2009, Available at SSRN: https://ssrn.com/abstract=1393262

Ilanah Simon (Contact Author)

Institute of Brand and Innovation Law, Unversity College London ( email )

Gower St
London WC1E OEG, WC1E 6BT
United Kingdom

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