SA Trademark similar to a movie name

[jason Smith]

Hi,

I am about to launch a wine label that has the same name as a famous surf movie. I have the trademark in all wine related categories but want to know if I can use surfing to promote my wine?

Regards
Jason

 

[Paul Cott]

Hi Jason, whilst the answer to your question is difficult to answer definitively, if deception and or confusion may be generated in the public by a purported association between your wine label versus the movie and their intellectual property in it, you should be very wary about promoting your label by surfing. Particularly is this the case when the same name is used. The public may see an association where none exists and be misled by the situation.

 

[jason Smith]

Thank you for you reply. Currently the movie is not trademarked. Does this make a difference?

 

[Paul Cott]

Not necessarily Jason as in a sense, trademark registration sits outside the relevant common law and legislation.

 

[jason Smith]

What are the key points to look at?

 

[Paul Cott]

The key issue or points is the potential for confusion or misleading (even if unintentional) of the public by similarities in the businesses or seeming associations between the movie and your new label and it's marketing.

 

[Kim Walters]

You may advertise and promote your wine including through, say, a surfing advertisement, provided it is clear that the brand you are promoting is your wine and not the movie. Paul is correct, there should be no misleading and deceptive associations. As the owner of the trade mark in the brand, you have the right to advertise and promote it, provided the public is not misled or deceived as to the identity of the source of the supply.