A recent case involving the well-known crystal manufacturer, Waterford, showed that trade mark rights rest fairly firmly in their appropriate domains and will not be enforced when there is little likelihood of confusion between the goods in question.
Waterford had opposed the use of the name ‘Waterford’ by South African wine maker, Stellenbosch, on a label for its wines. The opposition was on the basis that the similarity of the names might lead to confusion between the products in the minds of consumers. The Court of First Instance rejected Waterford’s opposition. In the Court’s ruling, it concluded that the question of similarity of the goods had to consider:
- the relationship between the goods in question;
- the nature and intended purpose of the goods;
- the method of use of the goods; and
- whether the goods in question are in competition with one another or complementary.
The main issue was regarding the complementary nature of the wine and wine glasses. Perhaps surprisingly, although glasses and wine are sometimes sold in the same places, in the Court’s view this was considered to be incidental and of no commercial significance.
For owners of internationally recognised brands (such as Guinness or Rolex), extended protection is given by statute, so it is perhaps somewhat surprising that Waterford Crystal lost its case. Owners of less august brand names should consider registering trade marks for use in any areas in which having another business use the name could have a negative impact on their business.