Fhima, Ilanah Simon --- "Same Name, Different Goods – Death of the Principle of Specialty" [2009] ELECD 274; in Simon Fhima, IIanah (ed), "Trade Mark Law and Sharing Names" (Edward Elgar Publishing, 2009)

Book Title: Trade Mark Law and Sharing Names

Editor(s): Simon Fhima, IIanah

Publisher: Edward Elgar Publishing

ISBN (hard cover): 9781847202796

Section: Chapter 7

Section Title: Same Name, Different Goods – Death of the Principle of Specialty

Author(s): Fhima, Ilanah Simon

Number of pages: 28

Extract:

7. Same name, different goods ­ death of
the principle of specialty
Ilanah Simon Fhima

1. INTRODUCTION
In a nutshell, the principle of specialty dictates that a mark's scope of protec-
tion 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 will begin by briefly considering the background to the
specialty principle, and the effect that this forced sharing of names has. It
will go on to argue that specialty has been eroded in two, ultimately distinct,
ways:

1. by an expansion of the situations in which the courts hearing both
passing off cases and registered trade mark cases are prepared to
recognize the existence of actionable confusion and
2. through the adoption of dilution and unfair advantage as indepen-
dently actionable forms of registered trade mark infringement.

However, it will conclude 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.




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102 Shared name litigation

2. WHAT'S SO SPECIAL ...