Rights in Commercial Get-Up, Trade Names, and the Like
Even where no trademark right is registered, any sign, emblem, or get-up identified with one trader may not be used by another with a view to diverting custom. This is achieved by rules relating to unfair competition, or passing-off, or by statutes that prohibit specific unfair marketing practices. To invoke this protection, injured parties must generally prove that the allegedly infringing item is associated with them by their customers. Such evidence can be expensive to obtain and, where obtained by survey evidence, may be rejected as methodologically flawed.
Although this relief is invoked with decreasing frequency as the scope of registrability of trademarks widens, it remains important. It may be the only relief where, for example, the plaintiff’s trade name or get-up is not registrable as a trademark, or where the activity objected to does not fall within the legal definition of trademark infringement but nonetheless interferes with the plaintiff ’s trade.
Hypothetical Case Study
Calorie Corporation develops a fast-food concept that it wishes to develop as a business format franchise. Following confidential discussions with external consultants and key officers, the corporation creates a manual containing descriptions of the various concepts that will comprise the new franchise, together with sketches and guidance on operating, reordering stock, accounting, and advertising. Each element of the manual is protected by copyright as well as by confidentiality.
Calorie next produces a model for the restaurant, including furniture and design concepts, which it trials at a nearby location. Now the existence of the restaurant becomes public knowledge, though the contents of the manual do not. Members of the public give their reactions, which are favorable, to the ambience and décor, which, collectively, constitute the restaurant’s get-up. The name Fancy-Fry is chosen for the concept. This cannot initially be registered as a trademark since it is descriptive of the restaurant’s fare. However, the name catches on and generates goodwill among local diners.
A disgruntled ex-employee surreptitiously obtains a copy of the format manual, which he photocopies and returns. Using it, he opens up the Fancy-Free restaurant across the street from Fancy-Fry. The ambience and get-up of the two restaurants cause diners to assume that they belong to the same franchise.
Calorie can sue for injury to its confidential information, infringement of its unregistered trademark and its copyright, for misappropriation of its trade dress, and can force Fancy-Free to change or close—all without the assistance of any registered intellectual property rights.
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