Brand Twins under Trademark law
Finding a unique brand name can be very difficult. In fact, plenty of companies share a brand name, even when they have registered their brand name as a trademark. This is sometimes referred to as ‘Brand Twins’.
A famous example of this is the brand name Lotus, which is not only used by the Belgian Lotus Bakeries but also for luxury cars and toilet paper. Another example is Dove, which is used as a brand name for cosmetics as well as for chocolates.
Are these trademarks not protected?
How exactly is this possible under trademark law, while a registration gives you exclusive rights? The answer lies in the so-called specialty principle - the most important limitation of trademark rights. It means that the trademark protection is limited to goods and services indicated in the class descriptions of the trademark registration.
Therefore, when filing a trademark, you are obligated to indicate one or more classes of the international Nice-classification system, as well as submit class descriptions for each class. There are 45 classes in this system, 30 of which are for goods and 15 of which are for services.
To ensure an optimal scope of protection of your trademark rights, it is essential that you indicate the correct classes and use adequate class descriptions, as these cannot be changed after the registration of your trademark.
A specialized monopoly
As a result, trademark rights do not give an unlimited monopoly to the trademark holder, but only a specialized monopoly. Hence, they will only be able to prevent third parties from using the trademarked brand name for similar goods and services, as there is no risk of consumer confusion when the goods and services are dissimilar.
Now, does this mean you could start your own shoe-firm called ‘Coca-Cola’ tomorrow? Or perhaps a gym called ‘McDonalds’? Unsurprisingly, this is not the case. For famous trademarks there are special rules. These trademark holders can prevent third parties from using their trademarks even for goods and services which are not similar, provided that they can prove their trademark has a reputation and that the use without due cause of a similar sign takes unfair advantage of, or is detrimental to, the distinctive character or reputation of their trademark.
We also have twins!
Our name saw the light in 1989 for the activities of Name Creation, Brand Consulting, Legal Advice and Business Management. A name that is unique in the sector, available and with a wink to our activities.
For the sake of completeness, in 1996 an English printing company came along and in 2016 the tablets came out under the name Remarkable.
So the next time you come across a Brand Twin, or have doubts about the availability of your new brand name, always know that the same name can be used if there is a distinct class description and no confusion for the consumer. We will be happy to assist you!