It’s fair to say that the bigger the brand, the more valuable it is; so it is no surprise that businesses will try their best to protect their brand even when, in hindsight, it may not have been the most commercially sound decision.
A perfect example of this is the recently reported case involving rap mogul and Beats inventor Dr Dre and renowned gynaecologist Dr Drai (real name Draion M Burch).
In brief, Dr Dre attempted to stop Draion M Burch from registering the name “Dr Drai” claiming that it was too similar and phonetically identical to his, and therefore it was likely to cause confusion amongst the general public.
Dr Drai responded by arguing that there was no risk of confusion “because Dr Dre is not a medical doctor nor is he qualified to provide any type of medical services or sell products specifically in the medical or healthcare industry”.
Ultimately the US Trademark Office sided with Dr Drai over Dr Dre because of the failure to show “that a connection would be presumed in the mind of the consuming public when Applicant’s Dr Drai marks are used in connection with its applied-for goods and services”.
Whilst the specifics of the case are not incredibly important given the judgment is based on US law, it does serve as a useful general point to highlight a similar concept in English law in respect of trademarks and their protection. Under English law, there are 48 different classes of goods and services in which a trademark can be registered under and, if granted, this then stops anyone from registering a similar or identical name in that same class.
However, sometimes a trademark is not capable of being registered. There are a number of reasons for this; one of which is that the trademark is too descriptive of the services that it provides, and so the owner of the brand needs to rely on the common law right of passing off.
In order for the owner of a brand or trademark to stop another party from using the brand or trademark, they traditionally need to establish three things:
- that there is goodwill or a reputation attached to the goods or services, i.e. the longer you have been operating under your brand, the better;
- that there has been some confusion, i.e. that the ordinary person in the street might think the services/goods are linked to the other brand; and
- that there has been some damage, i.e. you have suffered loss as a result of the other party’s actions.
As highlighted above, had Dr Dre attempted to take action against Dr Drai, it is likely that the UK Trademark Office would have come to a similar decision to its US counterpart. There simply isn’t any evidence of confusion between the two widely contrasting areas of business. If on the other hand Dr Drai decided to try his hand at rap, then Dr Dre would have had a very good argument.